Justia U.S. 11th Circuit Court of Appeals Opinion SummariesArticles Posted in Intellectual Property
Victor Elias Photography, LLC v. Ice Portal, Inc.
Plaintiff, a commercial photographer, discovered infringing uses of his copyrighted images on the internet. Instead of pursuing the infringing parties, Plaintiff brought a lawsuit against Ice Portal, Inc. – now a division of Shiji (US), Inc. (“Shiji”) – which acts as an intermediary between the hotels that licensed Plaintiff’s photographs and online travel agents (“OTAs”) like Expedia and Travelocity.In optimizing the photographs for use by the OTAs, Shiji’s software allegedly removed certain copyright-related information that Plaintiff had embedded within the metadata of the photographs. Defendant claimed that Shiji, therefore, violated the Digital Millennium Copyright Act (“DMCA”). The district court correctly granted summary judgment to Shiji because Plaintiff did not show an essential element of its claim – namely, that Shiji knew, or had reasonable grounds to know, that its actions would induce, enable, facilitate, or conceal a copyright infringement. The Eleventh Circuit affirmed. The court held that Plaintiff did not meet its burden of coming forward with sufficient evidence demonstrating Section 1202(b)’s second scienter requirement, and judgment in Shiji’s favor was therefore appropriate. The court explained that the statute’s plain language requires some identifiable connection between the defendant’s actions and the infringement or the likelihood of infringement. To hold otherwise would create a standard under which the defendant would always know that its actions would “induce, enable, facilitate, or conceal” infringement because distributing protected images wrongly cleansed of CMI would always make infringement easier in some general sense. View "Victor Elias Photography, LLC v. Ice Portal, Inc." on Justia Law
Jaime Faith Edmondson, et al. v. Velvet Lifestyles, LLC, et al.
Miami Velvet operated as a swingers’ nightclub in Miami, Florida. The appellants, in this case, Yorkies and Mrs. Dorfman were Miami Velvet’s managers. Appellants appealed the district court’s final judgment, which awarded over 30 plaintiffs damages for false advertising and false endorsement under the Lanham Act, following the entry of summary judgment on liability and a jury award of damages. The Eleventh Circuit reversed the district court’s judgment, set aside the jury’s award of damages to Appellants, and remanded for trial. The court explained that there was not enough evidence to support the entry of summary judgment. Here the advertisements with Plaintiffs’ images were created for and used by Velvet Lifestyles. But Plaintiffs did not just sue Velvet Lifestyles; they also sued Yorkies and Mrs. Dorfman. To prevail on their false advertising and false endorsement claims against Appellants, Plaintiffs had to show that Yorkies itself engaged in or participated in the prohibited conduct along with Velvet Lifestyles (direct liability) or that the corporate veil between Yorkies and Velvet Lifestyles should be pierced (indirect liability).Plaintiffs did not satisfy their burden of showing the absence of a genuine issue of material fact regarding whether Yorkies and Mrs. Dorfman were responsible for the Lanham Act violations. Rather than making the necessary showing in their motion for summary judgment, Plaintiffs simply treated Velvet Lifestyles, Yorkies, and Mrs. Dorfman as one and the same. They exclusively discussed Defendants collectively in the argument section of their motion, presumably operating on the mistaken assumption that if Velvet Lifestyles was liable for violating the Act, so were Yorkies and Mrs. Dorfman. View "Jaime Faith Edmondson, et al. v. Velvet Lifestyles, LLC, et al." on Justia Law
Financial Information Technologies, LLC v. iControl Systems, USA, LLC
Fintech, a seller of software that processes alcohol-sales invoices within 24 hours, filed suit against its competitor, iControl, alleging misappropriation of trade secrets. After the jury found in favor of Fintech, iControl sought a new trial on liability and judgment as a matter of law on damages. Fintech then sought a permanent injunction broadly prohibiting iControl from using either company's software. The district court denied all motions and both parties appealed.The Eleventh Circuit concluded that the district court correctly denied iControl's new trial motion on liability where there is no "absolute absence of evidence" to set aside the jury's findings; erred in denying iControl's judgment as a matter of law motion on damages because Fintech did not deduct marginal costs in calculating lost profits; and correctly refused Fintech's requested injunction, which sweeps too broadly. Accordingly, the court affirmed in part, reversed in part, and remanded for further proceedings. The court noted that, on remand, the district court should require an accounting of marginal costs to enable a proper lost-profits calculation. View "Financial Information Technologies, LLC v. iControl Systems, USA, LLC" on Justia Law
Boigris v. EWC P&T, LLC
EWC, which runs a nationwide beauty brand European Wax Center and holds the trademark "European Wax Center," filed suit under the Anti-Cybersquatting Consumer Protection Act (ACPA), against defendant, who used GoDaddy.com to register the domain names "europawaxcenter.com" and "euwaxcenter.com." EWC alleged that defendant registered his domain names with a bad faith intent to profit from their confusing similarity to EWC's "European Wax Center" mark.The Eleventh Circuit affirmed the district court's grant of summary judgment in favor of EWC, concluding that no reasonable juror could conclude that "europawaxcenter" and "euwaxcenter" are not confusingly similar to "European Wax Center" -- they are nearly identical to the mark in sight, sound, and meaning. View "Boigris v. EWC P&T, LLC" on Justia Law
Pinnacle Advertising and Marketing Group, Inc. v. Pinnacle Advertising and Marketing Group, LLC
This appeal arose out of a trademark dispute between two advertising and marketing companies—both of which operate under the name Pinnacle Advertising and Marketing Group. Pinnacle Illinois filed suit, and then Pinnacle Florida filed a counterclaim seeking to cancel Pinnacle Illinois's trademark registrations under the Lanham Act, 15 U.S.C. 1119.The Eleventh Circuit concluded that the district court erred by disregarding the jury's findings that Pinnacle Illinois's marks were distinctive and protectable and misapplying the presumption of validity given to registered marks. Accordingly, the court vacated and remanded the district court's order cancelling Pinnacle Illinois's registrations. Although the court affirmed the district court's finding that Pinnacle Illinois's claims for monetary damages were barred by laches, the court remanded for the district court to consider whether to grant Pinnacle Illinois injunctive relief to protect the public's interest in avoiding confusion. View "Pinnacle Advertising and Marketing Group, Inc. v. Pinnacle Advertising and Marketing Group, LLC" on Justia Law
MidlevelU, Inc. v. ACI Information Group
After a blog operator filed suit against a content aggregator for copyright infringement after the aggregator copied and published the blog's content, the jury ruled in favor of the blog operator. At issue is whether the district court should have allowed the jury to decide whether the aggregator had an implied license to copy and publish the blog's content.The Eleventh Circuit concluded that, although the district court employed a too narrow understanding of an implied license, a jury could not have reasonably inferred that the blog impliedly granted the aggregator a license to copy and publish its content. In this case, the district court erred by granting judgment as a matter of law against the aggregator on its implied-license defense; the district court did not err by instructing the jury that it could consider unregistered articles in its calculation of statutory damages; the district court did not abuse its discretion by denying the aggregator's motion for a new trial on the basis of the jury's statutory-damages award; the district court did not err by failing to consult with the register of copyrights about the alleged fraud on the copyright office; and the aggregator is not entitled to judgment as a matter of law on its fair-use defense. Accordingly, the court affirmed the judgment against the aggregator. View "MidlevelU, Inc. v. ACI Information Group" on Justia Law
Acrylicon USA, LLC v. Silikal GMBH
This appeal involves AC-USA's and Silikal's dispute over a shared trade secret consisting of the formula for 1061 SW, a flooring resin Silikal manufactured and sold (along with other flooring resins). AC-USA filed suit alleging that Silikal breached the agreement by selling 1061 SW without its written permission. A jury awarded AC-USA damages on each of its claims for common law breach of contract and for violation of the Georgia Trade Secrets Act of 1990 (GTSA) for misappropriation of the shared trade secret. The district court also awarded punitive damages on the misappropriation claim. The district court then denied Silikal's post-verdict motion for judgment as a matter of law on the misappropriation and contract claims, entering a final judgment for AC-USA for $5,861,415.The Eleventh Circuit rejected Silikal's argument that the district court lacked jurisdiction over its person, and thus affirmed the district court's denial of Silikal's motion to dismiss. However, the court concluded that AC-USA failed to prove its misappropriation claim because the evidence that Silikal misappropriated the trade secret is insufficient as a matter of law. Furthermore, AC-USA failed to prove that it sustained cognizable damages on its contract claim. Therefore, the court reversed the district court's judgment on the misappropriation claim and vacated the damages awarded on the contract claim. Finally, the court held that AC-USA is entitled to nominal damages and attorney's fees on its contract claim in a sum to be determined by the district court on remand. View "Acrylicon USA, LLC v. Silikal GMBH" on Justia Law
Savannah College of Art and Design, Inc. v. Sportswear, Inc.
SCAD filed suit against Sportswear for trademark infringement, unfair competition, false designation of origin, and counterfeiting under the Lanham Act, and for unfair competition and trademark infringement under Georgia common law. The dispute involves Sportswear's use of SCAD's word marks "SCAD" and "SAVANNAH COLLEGE OF ART AND DESIGN" as well as the college's design mark that includes its mascot, Art the Bee.The Eleventh Circuit affirmed the district court's judgment on remand, holding that the district court properly entered summary judgment on two Lanham Act claims and the corresponding permanent injunction enjoining Sportswear from selling products bearing the SCAD marks at issue. The court concluded that its trademark precedents of Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), Univ. of Ga. Ath. Ass'n v. Laite, 756 F.2d 1535 (11th Cir. 1985), and Savannah College of Art & Design, Inc. v. Sportswear, Inc., 872 F.3d 1256, 1264, 1265 (11th Cir. 2017), require affirmance of the district court's judgment. In this case, the district court correctly found a likelihood of confusion as to Sportswear's use of SCAD's word marks and Bee Design Mark. View "Savannah College of Art and Design, Inc. v. Sportswear, Inc." on Justia Law
J-B Weld Co., LLC v. The Gorilla Glue Co.
J-B Weld filed suit against Gorilla Glue, alleging claims for trade dress infringement under the Lanham Act, Georgia law, and the common law of unfair competition; trade dress dilution under Georgia law; and false advertising under the Lanham Act and Georgia law.The Eleventh Circuit affirmed the district court's grant of summary judgment for Gorilla Glue as to the false advertising claims, agreeing with the district court that J-B Weld has not shown that the inclusion of "steel bond epoxy" on GorillaWeld's packaging is material to consumers. However, the court reversed and remanded with respect to the trade dress infringement and trade dress dilution claims. In regard to the trade dress infringement claims, the court held that, although the posture of the case required the district court to view the evidence in the light most favorable to J-B Weld, the district court failed to do so in analyzing the "likelihood of confusion" between J.B. Weld Original's trade dress and GorillaWeld's trade dress. In regard to the trade dress dilution claims, the court held that the district court's abbreviated treatment of this claim leaves it with serious doubt that it applied the correct standard in concluding that J-B Weld was unable to show trade dress dilution. In this case, the district court's remarks about the indistinguishability of the applicable standards indicates that it applied the elements of the trade dress infringement claims to the trade dress dilution claim, thus conflating the two different sets of requirements. View "J-B Weld Co., LLC v. The Gorilla Glue Co." on Justia Law
Compulife Software Inc. v. Newman
Compulife Software, which has developed and markets a computerized mechanism for calculating, organizing, and comparing life-insurance quotes, alleges that one of its competitors lied and hacked its way into Compulife's system and stole its proprietary data. At issue was whether defendants crossed any legal lines—and, in particular, whether they infringed Compulife's copyright or misappropriated its trade secrets, engaged in false advertising, or violated an anti-hacking statute.The Eleventh Circuit vacated the judgment as to copyright infringement and trade-secret misappropriation, remanding for new findings of fact and conclusions of law. The court held that the magistrate judge committed errors of law and made insufficient findings, which tainted his conclusion that Compulife's copyright was not infringed. The court also held that the magistrate judge erred in his analysis of trade-secret misappropriation, both by failing to consider the application of several species of misappropriation and by committing legal error. The court found no reversible error in the magistrate judge's rejection of Compulife's other claims, affirming the remainder of the judgment. View "Compulife Software Inc. v. Newman" on Justia Law