Rainbow School, Inc. v. Rainbow Early Education Holding LLC

After finding that Rainbow Early Education Holding LLC (“Early Education”) had violated the terms of a consent judgment and permanent injunction, the district court held Early Education in contempt and awarded $60,000 to Rainbow School, Inc. (“the School”), plus attorney’s fees and costs. When the School moved for additional relief based on what it alleged to be continued and new violations of the injunction, the district court deferred a final determination and ordered Early Education to pay for an audit to assist in determining whether violations remained and could reasonably be cured. Early Education appeals both decisions. For the reasons set out below, we affirm the district court’s finding of contempt and award of sanctions, and dismiss for lack of jurisdiction Early Education’s appeal from the order requiring it to undergo an audit.

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Kim v. Kimm

Plaintiff‐Appellant Daniel Kim appeals from a judgment entered in favor of Defendants‐Appellees Michael S. Kimm, Michael‐Hyun W. Lee, Hyung Suk 26 Choi, Chul Ho Park, Charlie Park, Jin Young Chung, Charlie and You, Inc., and Swan U.S.A., Inc., by the United States District Court for the Eastern District of New York (Allyne R. Ross, Judge). Kim alleges that the defendants were members of two enterprises that conspired to sue him for, inter alia, trademark infringement, and brings claims against them pursuant to the Racketeer Influenced and Corrupt Organizations Act, 18 U.S.C. § 1961, et seq. In two 6 opinions, the district court granted the defendantsʹ motion to dismiss, denied the plaintiffʹs motions to disqualify the defendantsʹ counsel and for leave to amend his amended complaint, and denied the defendantsʹ motion for sanctions. We agree with the district courtʹs resolution of these motions. Accordingly, the judgment of the district court is AFFIRMED.

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Eat Right Foods Ltd. v. Whole Foods Market, Inc.

The panel vacated the district court’s grant of summary judgment in favor of the defendant in a trademark infringement case, affirmed the district court’s denial of the plaintiff’s cross-motion for summary judgment, and remanded with instructions.

Eat Right Foods, which sold “EatRight”-branded cookies to Whole Foods for many years, alleged that Whole Foods infringed on its trademark by selling a variety of foods under the “EatRight America” mark.

The panel concluded that disputed material facts establishing or defeating the affirmative defenses of laches and acquiescence had not been resolved. As to laches, the panel concluded that if the district court had credited Eat Right Foods’ evidence that it waited to file suit because it was attempting to resolve its claims against Whole Foods without litigation, then the court might have come to a different conclusion about the reasonableness of the delay. The panel also vacated the district court’s finding that Whole Foods suffered expectations-based prejudice. As to acquiescence, the panel held that the flaws in the district court’s unreasonable delay and prejudice analyses also affected its acquiescence analysis. In addition, the district court failed to make factual findings regarding the extent and reasonableness of Whole Foods’ reliance on Eat Right Foods’ actions.

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Commodores Entertainment Corp. v. McClary

In this common-law trademark case, Thomas McClary appeals from an order granting judgment as a matter of law to Commodores Entertainment Corporation (CEC) and converting a preliminary injunction into a permanent one against McClary and his corporation, Fifth Avenue Entertainment, LLC. The dispute concerned ownership of the mark “The Commodores,” the name of a famous Grammy Award–winning rhythm and blues, funk, and soul music band. McClary was an original member of The Commodores, but, by his own admission, he “split from the band” in 1984 to strike out on his own in the world of music. He later formed a musical group that performed as “The 2014 Commodores” and “The Commodores Featuring Thomas McClary.” When CEC -- a corporation run by two original Commodores who remain active with the group -- found out about McClary’s group, it filed this lawsuit against McClary and Fifth Avenue claiming trademark infringement, trademark dilution, passing off, false advertising, and unfair competition.

The district court granted CEC a preliminary injunction and enjoined McClary from using the marks; a panel of this Court affirmed. Then, after a twoweek trial, the district court granted judgment as a matter of law to CEC and converted the preliminary injunction into a permanent one. McClary and Fifth Avenue appeal that order, as well as the district court’s oral ruling denying their motion to dismiss for failure to join an indispensable party.

After careful review, we hold we lack jurisdiction to review the denial of the motion to dismiss and that the district court did not abuse its discretion in excluding expert testimony from an attorney who proffered only legal conclusions. We also conclude that when McClary left the band, he left behind his common-law rights to the marks. Those rights remained with CEC. Moreover, we conclude that the scope of the injunction was not impermissibly broad, that McClary’s arguments about the validity of the federal registration of the marks are irrelevant to this determination, and that McClary did not establish any affirmative defenses. Accordingly, we affirm.

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Twentieth Century Fox Television v. Empire Distribution

Affirming the district court’s summary judgment in favor of Twentieth Century Fox Television and Fox Broadcasting Company, the panel held that Fox’s use of the name “Empire” was protected by the First Amendment, and was therefore outside the reach of the Lanham Act. Fox sought a declaratory judgment that its television show titled Empire and associated music releases did not violate the trademark rights of record label Empire Distribution, Inc. Empire counterclaimed for trademark infringement and other causes of action.

The panel explained that when an allegedly infringing use is in the title or within the body of an expressive work, the Rogers test is used to determine whether the Lanham Act applies. The panel held that the Rogers test applied to Fox’s use of the mark “Empire.” The panel concluded that the first prong of the test was satisfied because it could not say that Fox’s use of the mark had no artistic relevance to the underlying work; rather, the title Empire supported the themes and geographic setting of the work. The second prong of the test also was satisfied because the use of the mark “Empire” did not explicitly mislead consumers.

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Dan Farr Productions v. USDC-CASD

This petition for a writ of mandamus arises in the context of a hotly contested trademark action initiated by San Diego Comic Convention (“SDCC”) against the producers of the Salt Lake Comic Con—Dan Farr Productions, Daniel Farr, and Bryan Brandenburg (“Petitioners”)—over the use of the mark “comiccon” or “comic con.” The case has drawn nationwide attention and discussion on traditional and social media alike, in part because “comic cons” have been held in hundreds of venues across the United States. Because defendants actively participated in the public discussions over the internet, on various websites and through social media platforms, including Twitter feeds and Facebook postings, SDCC successfully moved for a sweeping set of “suppression orders” prohibiting Petitioners from expressing their views on the pending litigation and from republishing public documents over social media platforms. Instead, the court ordered Petitioners to prominently post on their social media outlets its order prohibiting comments about the litigation on social media, dubbing this posting a “disclaimer.” Petitioners assert that the court-ordered prior restraints on their speech violate the First Amendment. We agree, and order that the district court vacate the “suppression” and “disclaimer” orders.

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AuSable River Trading Post, LLC v. Dovetail Solutions, Inc.

Plaintiff-Appellant AuSable River Trading Post, LLC (the “Trading Post”) filed this action against Defendants-Appellees Dovetail Solutions, Inc. (“Dovetail”) and Tawas Area Chamber of Commerce (the “Chamber”) for a declaratory judgment as to whether Defendants hold a valid, enforceable trademark for the term “Perchville,” and for damages under Michigan state law claims. The district court granted summary judgment in favor of the Defendants, finding that Plaintiff’s trademark challenge is barred by the doctrine of res judicata and remanding the state court claims. In reaching its conclusion, the district court determined that Plaintiff was in privity with an hourly employee who had previously consented to a permanent injunction barring his use of the “Perchville” mark. Plaintiff challenges the district court’s finding that it is in privity with its employee for purposes of res judicata. We REVERSE.

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Savannah College of Art and Design, Inc. v. Sportswear, Inc.

“Imitation may be the sincerest form of flattery,” Charles C. Colton, Lacon, Vol. 1, No. 183 (1820–22), in Bartlett’s Familiar Quotations 393:5 (16th ed. 1992), but when the imitation consists of commercial reproduction for profit, all bets are off. So when Sportswear, Inc. began using the federally-registered service marks of the Savannah College of Art and Design without a license to sell apparel and other goods on its website, SCAD did not take kindly to the copying and sued for equitable and monetary relief. SCAD asserted a number of claims against Sportswear, including service mark infringement under 15 U.S.C. § 1114; unfair competition and false designation of origin under 15 U.S.C. § 1125; and unfair competition under O.C.G.A. § 10-1-372.

This is SCAD’s appeal from the district court’s grant of summary judgment in favor of Sportswear. The district court, relying on Crystal Entertainment & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1315–16 (11th Cir. 2011)—a case involving a dispute over common-law trademark rights to a band name— concluded that SCAD had failed to establish that it had enforceable rights in its marks that extended to apparel. SCAD, which validly registered its marks only in connection with the provision of “education services,” did not show that it had used its marks on apparel earlier than Sportswear in order to claim common-law ownership (and priority) over its marks for “goods.” See Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., 2015 WL 4626911, at *2 (N.D. Ga. 2015).

We reverse. This case, unlike Jurado, does not involve the alleged infringement of a common-law trademark, and as a result the date of SCAD’s first use of its marks on goods is not determinative. One of our older trademark cases, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), controls, as it extends protection for federally-registered service marks to goods. Although Boston Hockey does not explain how or why this is so, it constitutes binding precedent that we are bound to follow.

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Wine & Canvas Development, LLC v. Muylle

Wine and Canvas Develop‐ ment, LLC, Anthony Scott, Tamara McCracken, and Donald McCracken sued Christopher Muylle, Theodore Weisser, YN Canvas CA, LLC, Art Uncorked LLC, and Weisser Manage‐ ment Group LLC, bringing federal trademark and state law claims. Muylle brought several counterclaims, including one for abuse of process under Indiana law. Weisser defaulted, and it appears that Weisser and Muylle were the only mem‐ bers of the defendant LLCs, so practically speaking the case ultimately amounted to Plaintiffs against Muylle. Pretrial motions disposed of much of the case, and the jury found for Muylle on Plaintiffs’ trademark infringement and false des‐ ignation of origin claims and on Muylle’s abuse of process counterclaim. Plaintiffs appeal, and we affirm.

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In re: North Carolina Lottery

Appellant North Carolina Lottery (“N.C. Lottery”) seeks to register the mark “FIRST TUESDAY” in connection with lottery services and games, to market the introduction of new scratch-off lottery games on the first Tuesday of each month. It appeals the decision of the U.S. Patent and Trademark Office’s (“PTO”) Trademark Trial and Appeal Board (“TTAB”) denying registration of the mark. We affirm.

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