Intellectual Property and Tech Law Reports

North American Medical Corp. v. Axiom Worldwide

Defendants-Appellants Axiom Worldwide, Inc. (“Axiom”), James Gibson, Jr., and Nicholas Exharhos appeal the district court’s grant of a preliminary injunction in favor of the Plaintiffs-Appellees, North American Medical Corporation (“NAM”) and Adagen Medical International, Inc. (“Adagen”). The district court enjoined the Defendants-Appellants from engaging in certain alleged acts of trademark infringement and false advertising. We now affirm the district court’s order in part and vacate and remand it in part.

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Angel Flight of Georgia, Inc. v. Angel Flight Southwest

We AFFIRM the district court’s ruling in its entirety. The district court did not err in ruling (1) AFSE infringed AFGA’s common law trademark rights by using the mark in a manner that created a substantial risk of confusion; and (2) AFGA had not acquiesced to AFSE’s infringing use and was not estopped by laches from enforcing its common law rights in the mark. Similarly, the injunction entered by the district court, which was tailored to protect AFGA’s rights and ensure the public would not be confused, was properly entered. Finally, the district court did not clearly err by cancelling United States Trademark No. 1,491,541 on the ground the registration had been obtained through fraud.

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PRL USA Holdings, Inc. v. US Polo Ass'n

Plaintiff PRL USA Holdings, Inc., holder of the Ralph Lauren trademarks, appeals from the judgment of the United States District Court for the Southern District of New York (Daniels, J.), entered following a jury trial, denying plaintiff’s claims of trademark infringement. The jury found that three of the defendants’ four contested marks did not infringe the plaintiff’s polo player trademark. Plaintiff contends that the district court erred in admitting evidence of discussions at settlement negotiations, excluding a document prepared by an agent of a defendant which arguably reflected intent to use trademarks similar to the Ralph Lauren trademarks to compete unfairly, and in refusing to give a requested jury instruction. Affirmed.

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Schlotzsky's, Ltd. v. Sterling Purchasing & Nat'l Distrib. Co., Inc

After a jury trial, the district court ruled in favor of a restaurant franchisor on claims brought against a food distributor under the Lanham Act. On appeal, the distributor alleges the Lanham Act was inapplicable, that an award of attorney fees and an injunction should be overturned, and that its counterclaims should be reinstated. We disagree and affirm.

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Buc Int'l Corp. v. Int'l Yacht Council Ltd.

MLS Solutions, Inc. and International Yacht Council Ltd. (“IYC”) were found by a jury to have violated the Copyright Act, 17 U.S.C. § 501, by infringing upon the selection, order, and arrangement of information contained in BUC International Corp.’s Used Boat Price Guide. The jury awarded BUC $1,598,278 in actual damages, and we affirmed that judgment. See BUC Int’l Corp. v. Int’l Yacht Council Ltd., 489 F.3d 1129 (11th Cir. 2007). Pursuant to the onesatisfaction rule, MLS and IYC moved the district court to reduce the final judgment against them by the settlement amounts that BUC obtained from codefendants that settled before trial. The district court declined. Because we conclude that the one-satisfaction rule does apply to infringement claims under the Copyright Act, we reverse.

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Sybersound Records, Inc. v. UAV Corp.

Sybersound Records (Sybersound), a karaoke record producer, appeals the district court’s judgment dismissing the first amended complaint (FAC) it filed against its competitors (collectively, Corporation Defendants), and their officers and employees (collectively, Individual Defendants). We affirm the judgment of the district court.

In this appeal, we determine whether a party lacking standing to bring a copyright infringement suit under the Copyright Act, but who complains of competitive injury stemming from acts of alleged infringement, may bring a Lanham Act claim, Racketeer Influenced and Corrupt Organizations Act (RICO)
claim, or related state law unfair competition claims, whose successful prosecution would require the litigation of the underlying infringement claim. We hold that it cannot.

We also consider whether the transfer of an interest in a divisible copyright interest from a copyright co-owner to Sybersound, unaccompanied by a like transfer from the other copyright co-owners, can be an assignment or exclusive license that gives the transferee a co-ownership interest in the copyright. We hold that it cannot.

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ITC Ltd. v. Punchgini, Inc.

Appeal from an award of summary judgment in favor of defendants on claims of trademark infringement, unfair competition, and false advertising in connection with defendants’ use of a mark for restaurant services that plaintiffs had stopped using in the United States for more than three years but that they assert nevertheless qualifies for protection as a “famous mark” based on continuing international use.

Decision affirmed in part; reserved in part pending the response of the New York Court of Appeals to certified questions of state law.

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Jada Toys, Inc. v. Mattel, Inc.

Defendant-Appellant Mattel, Inc. (“Mattel”) appeals the grant of summary judgment in favor of Jada Toys, Inc. (“Jada”) on Mattel’s federal and state trademark infringement counterclaims. Mattel also challenges the district court’s entry of summary judgment in favor of Jada as to its dilution and copyright claims.

We hold that because the district court erred in its application of the relevant infringement test, the district court’s entry of summary judgment in Jada’s favor as to those claims is reversed. We also hold that genuine issues of material fact exist as to Mattel’s copyright and dilution claims and, therefore, the district court’s entry of summary judgment as to those claims in favor of Jada is also reversed.

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Segal v. Geisha NYC, LLC

This case concerns the national expansion of Japonais, a popular Chicago restaurant located in the River North restaurant district. Japonais founder, Jonathan Segal, appeals from an order dismissing his complaint against Geisha NYC LLC (“Geisha NYC”),and others. Segal’s sole federal claim—a derivative claim he asserts on behalf of Geisha LLC (“Geisha Chicago”) and OSSS Hospitality LLC (“Hospitality Chicago”)—alleges that the defendants misappropriated the Japonais name and design in violation of the Lanham Act, see 15 U.S.C. § 1125(a). The district court dismissed this federal count, and then dismissed the remainder of the complaint under 28 U.S.C. § 1367(c)(3). Because Geisha NYC’s trademark use was authorized, we affirm these dismissals.

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Ty Inc. v. Softbelly's, Inc.

Ty Inc., the manufacturer of “Beanie Babies,” years ago brought this suit for trademark infringement under the Lanham Act against Softbelly’s, Inc., and some other defendants that need not be discussed separately. Softbelly’s manufactures a product that looks and feels very much like “Beanie Babies,” which it calls “Screenie Beanies.” They differ from Ty’s product mainly in having chamois bellies and being sold to the public through computer stores for wiping computer screens: hence the chamois.

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To summarize, the grant of the injunction against Softbelly’s is affirmed, but the case is remanded for the entry of a damages judgment of $713,000 against Softbelly’s minus the attorney’s fees incurred by Softbelly’s in the sanction litigation. Whether the damages judgment should be augmented by prejudgment interest we leave to the district judge to decide in the first instance.

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