Pinkette Cothing, Inc. v. Cosmetic Warriors Limited

The panel affirmed the district court’s judgment in favor of Pinkette Clothing, Inc., which sells LUSH-branded women’s fashions, in a case in which Cosmetic Warriors Limited (CWL), which sells LUSH-branded cosmetics and related goods, sought (a) an injunction restraining Pinkette from infringing on CWL’s LUSH trademark and (b) the cancellation of Pinkette’s registration of its own LUSH trademark.

Distinguishing Perella v. Metro-Goldwin-Mayer, Inc., 134 S. Ct. 1962 (2014) (Copyright Act), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017) (Patent Act), the panel held that laches is available as a defense to CWL’s cancellation claim because the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation.

The panel held that the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL’s claim for injunctive relief. The panel wrote that analysis of the ESystems factors validates the strong presumption in favor of laches created by CWL’s delaying past the expiration of the most analogous state statute of limitations. The panel concluded that the district court did not abuse its discretion in applying laches to bar CWL’s cancellation and infringement claims.

The panel held that the district court did not abuse its discretion in declining to apply the doctrine of unclean hands to preclude Pinkette from asserting laches, and that the inevitable confusion doctrine is inapplicable. The panel also held that evidence of Pinkette’s LUSH mark in Canada was not relevant to the infringement-related questions for which the jury was the sole trier of fact, and that any error in excluding the disputed evidence from the jury’s hearing was harmless because CWL was allowed to present all of its evidence to the district court after the jury was dismissed. Rejecting CWL’s argument that the words “other than clothing” in the district court’s judgment is inconsistent with the jury’s verdict and in error, the panel concluded that the judgment, read as a whole, accurately reflects the court’s disposition of the case.

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Cortes-Ramos v. Martin-Morales

This case concerns Luis Adrián Cortés-Ramos' appeal from a District Court order that dismissed his claims that the singer Enrique Martin-Morales violated various articles of the Puerto Rico Civil Code and federal copyright and trademark laws. The suit arises in connection with a songwriting contest held in Puerto Rico in 2014.

For purposes of this appeal, Cortés-Ramos does not dispute that, as a contestant, he agreed to the terms of the contest's rules and that they included an arbitration provision that compelled the submission to arbitration of those of his claims that "aris[e] in connection with, touch[e] upon or relat[e] to" those rules. He contends, though, that the District Court erred in granting Martin's motion to dismiss his claims based on that arbitration provision.

We agree with Cortés-Ramos. We therefore reverse the order dismissing his claims pursuant to Federal Rule of Civil Procedure 12(b)(6).

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Sazerac Brands, LLC v. Peristyle, LLC

Colonel Edmund Haynes Taylor, Jr., “the most remarkable man to enter the whiskey industry during the post-Civil War years,” built the Old Taylor Distillery in 1887. Once the “most magnificent plant of its kind in Kentucky,” the distillery fell into disrepair after the Colonel’s death. Will Arvin and Wesley Murry sought to turn things around. In 2014, they formed Peristyle to purchase the property, renovate it, and eventually resume bourbon production there. Peristyle regularly referred to its location at “the Former Old Taylor Distillery” or “Old Taylor” during the renovation period.

That generated heartburn for the next player in our case, Sazerac, a company that bought the trademark rights to “Old Taylor” and “Colonel E.H. Taylor” in 2009. Sazerac objected to Peristyle’s use of the Taylor name and sued Peristyle for infringement. Because Peristyle used the Old Taylor name descriptively and in good faith, it finds shelter under the Lanham Act’s fair use defense. We affirm.

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Moldex-Metric, Inc. v. McKeon Products, Inc.

The panel reversed the district court’s summary judgment in favor of the defendant in a suit for trademark infringement.

Moldex-Metric, Inc., a producer of foam ear plugs with a specific bright green color, alleged that McKeon Products, Inc., infringed its mark by using a similar green color for ear plugs. The district court concluded that the green color mark was functional and thus not protectable as trade dress.

Reversing, the panel held that the existence or nonexistence of alternative designs is probative of functionality or nonfunctionality. Thus, evidence of alternative colors must be considered in deciding the functionality of Moldex’s mark. The panel concluded that there remained a dispute of material fact as to whether Moldex’s bright green color was functional. The panel vacated the district court’s grant of summary judgment and remanded for the district court to consider McKeon’s arguments both that Molex’s green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial.

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Viacom International, Inc. v. IJR Capital Investments, LLC

Viacom International, Inc. (Viacom) sued IJR Capital Investments, L.L.C. (IJR) for infringing on its common law trademark of The Krusty Krab— a fictional restaurant in the popular “SpongeBob SquarePants” animated television series—after IJR took steps to open seafood restaurants using the same name. The district court granted summary judgment to Viacom on its trademark infringement and unfair competition claims. IJR appeals, asserting that Viacom does not have a valid trademark for The Krusty Krab and that its seafood restaurants would not create a likelihood of confusion between the two marks. We affirm the judgment of the district court.

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adidas America, Inc. v. Skechers USA, Inc.

The panel affirmed in part and reversed in part the district court’s preliminary injunction prohibiting Skechers USA, Inc., from selling shoes that allegedly infringe and dilute adidas America, Inc.’s Stan Smith trade dress and Three-Stripe mark.

Affirming in part, the panel held that the district court did not abuse its discretion in issuing the preliminary injunction as to adidas’s claim the Skechers’s Onix shoe infringed on adidas’s unregistered trade dress of its Stan Smith shoe. The panel concluded that adidas was likely to succeed on the merits of this claim because the trade dress was nonfunctional, the trade dress had acquired secondary meaning, and there was a substantial likelihood of confusion between the parties’ products. In addition, the district court did not clearly err in finding a likelihood of irreparable harm to the Stan Smith.

Reversing in part, the panel held that the district court erred in issuing a preliminary injunction as to adidas’s claim that Skechers’s Cross Court shoe infringed and diluted its Three-Stripe mark. The panel held that the district court did not err in finding that adidas showed a likelihood of success on its trademark infringement and trademark dilution claims. Nonetheless, the district court abused its discretion in issuing the preliminary injunction because adidas did not show that it would be irreparably harmed from sale of the Cross Court. Concurring in part and dissenting in part, Judge Clifton wrote that the preliminary injunction should be affirmed in full. Judge Clifton disagreed with the majority’s reversal of the preliminary injunction as to the Cross Court shoe on the ground that there was not evidence to support the district court’s determination that adidas was likely to suffer irreparable injury.

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East Iowa Plastics, Inc. v. PI, Inc.

This trademark dispute returns to us after proceedings on remand. In the previous appeal, E. Iowa Plastics, Inc. v. PI, Inc., 832 F.3d 899 (8th Cir. 2016), we asked the district court to address state-law questions pertaining to the availability of attorney’s fees and the ownership of a contested trademark. Id. at 907–08. The district court entered orders on those questions, and this appeal followed.

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ZW USA, Inc. v. PWD Systems, LLC

This case involves a trademark dispute between two companies that sell plastic bags for picking up and disposing of dog droppings. ZW USA, Inc. entered the dog bag market first and registered the mark ONEPUL. PWD, LLC entered the market after ZW under the trade name BagSpot. On its website, PWD uses the phrase “onepull” to describe some of its products. ZW sued PWD for infringement of its ONEPUL trademark, and PWD countersued claiming that the ONEPUL trademark is invalid. The district court granted summary judgment to PWD on the infringement claim, and to ZW on the validity claim. Both parties appealed.

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Variety Stores, Inc. v. Wal-Mart Stores, Inc.

This appeal arises from a protracted trademark dispute between appellant Variety Stores, Inc. (“Variety”), and cross-appellant and appellee Wal-Mart Stores, Inc. (“Walmart”). The district court granted partial summary judgment in Variety’s favor, finding Walmart liable for trademark infringement. Following a subsequent bench trial, the district court ordered Walmart to disgorge $32.5 million in profits made from 16 states and the District of Columbia. The district court denied Variety’s request for a separate jury trial to determine additional non-disgorgement damages and ordered Walmart to reimburse Variety for reasonable costs and attorneys’ fees. Variety appeals from the district court’s calculation of disgorged profits and denial of its request for a jury trial. Walmart cross-appeals from the district court’s grant of partial summary judgment in Variety’s favor and award of profit disgorgement, costs, and attorneys’ fees. Because the district court improperly granted summary judgment in Variety’s favor, we dismiss the appeal in part, affirm in part, vacate in part, and remand.

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Montauk U.S.A., LLC v. 148 South Emerson Associates LLC

Plaintiff-Appellant Montauk U.S.A., LLC (“Montauk”) appeals from (i) the district court’s dismissal without prejudice of its Lanham Act claims and motion for preliminary injunction under the “first filed” rule, and (ii) the district court’s order, pursuant to Fed. R. Civ. P. 41(d), that Montauk pay the costs, including attorneys’ fees, that Defendant-Appellee 148 South Emerson Associates LLC (“Associates”) incurred in responding to a previous action Montauk brought against Associates in Georgia state court that Montauk voluntarily dismissed. Central to Montauk’s appeal is the contention that Associates, a limited liability company, should have been held in default because Associates could not litigate through a partial owner who lacked derivative litigation rights under New York law.

Because New York law allows for derivative representation on the facts presented, we conclude at the outset that the district court correctly rejected Montauk’s request to hold Associates in default. We nevertheless vacate the district court’s dismissal of Montauk’s complaint and preliminary injunction motion in favor of a first-filed federal Georgia action because the Georgia suit has been transferred to the Eastern District of New York, so the reasoning behind the first filed ruling no longer pertains. We affirm the district court’s award of costs under Rule 41(d), including attorneys’ fees, incurred by Associates in the Georgia state action. Consequently, we AFFIRM in part, VACATE in part, and REMAND for further proceedings.

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