Justia U.S. 11th Circuit Court of Appeals Opinion Summaries

Articles Posted in Intellectual Property

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Plaintiffs, luxury eyewear manufacturers holding registered trademarks, filed a contributory trademark infringement action under the Lanham Act against defendants, owners of a discount mall whose subtenants were selling counterfeit eyewear. The Eleventh Circuit affirmed the jury's verdict in favor of plaintiffs, holding that the district court correctly determined that the evidence was sufficient—even under the legal standard the defendants urge the court to adopt—to support the jury's verdict finding defendants liable for contributory trademark infringement; committed no reversible error in instructing the jury; correctly determined that the evidence was sufficient to support the jury's verdict on each defendant's individual liability; and did not abuse its discretion in the challenged evidentiary rulings. View "Luxottica Group v. Airport Mini Mall, LLC" on Justia Law

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PlayNation filed suit against Velez for trademark infringement over the use of the Gorilla Gym mark and the district court entered judgment for PlayNation. The Eleventh Circuit held that the district court did not clearly err in holding that Velez infringed on PlayNation's trademark, and in cancelling Velex's trademark registration on that basis. However, the district court abused its discretion in holding that PlayNation was entitled to an accounting of Velex's profits due to willful infringement based solely on Velex's continued lawful use of its mark after Velex was served with the complaint. Therefore, the court affirmed in part, vacated in part, and remanded in part. View "PlayNation Play Systems, Inc. v. Velex Corp." on Justia Law

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The Eleventh Circuit affirmed the district court's denial of Hard Candy's request for a jury trial in an action under the Lanham Act. In this case, Hardy Candy sought every remedy permitted by the Act besides actual damages: an injunction to prevent future infringement, an accounting and the disgorgement of profits that the defendant made from the allegedly infringing goods, and declaratory relief, along with fees and costs. The court held that the remedy of an accounting and disgorgement of profits for trademark infringement is equitable in nature and has long been considered that way, and thus a plaintiff seeking the defendant's profits in lieu of actual damages is not entitled to a jury trial. The panel also held that the district court did not err in its merits determinations on infringement and fair use. View "Hard Candy, LLC v. Anastasia Beverly Hills, Inc." on Justia Law

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The Eleventh Circuit affirmed the district court's grant of summary judgment based on its finding that Kroma EU lacked standing to enforce the KROMA trademark. By Lee Tillett, Inc. was the owner and registrant of the mark and had the rights to use the KROMA mark in the United States. Some time after Tillett granted an exclusive license to Kroma EU, defendants (the Kardashian sisters) endorsed a cosmetic line called "Khroma Beauty," that was sold and manufactured by Boldface. The California district court subsequently granted Tillett's motion for a preliminary injunction against Boldface, finding that Tillett had demonstrated a likelihood of success on the trademark infringement claim. On appeal here, the court adopted the position taken by the district courts in this circuit and held that a licensee's right to sue to protect the mark largely depends on the rights granted to the licensee in the licensing agreement. The court held that the licensing agreement at issue did not give Kroma EU sufficient rights in the name to sue under the Lanham Act. In this case, the plain language of the licensing agreement demonstrated that the parties' intent was for Tillett to retain all ownership and enforcement rights; the agreement plainly authorized Tillett to file suit against infringers; and Kroma EU was limited in its available recourse. View "Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc." on Justia Law

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Plaintiffs, three publishing houses, alleged that members of the Board of Regents at GSU infringed their copyrights by maintaining a policy which allows GSU professors to make digital copies of excerpts of plaintiffs' books available to students without paying plaintiffs. At issue on appeal was whether the district court misinterpreted the Eleventh Circuit's mandate in an earlier appeal and misapplied the defense of fair use. The court held that the district court erred when it made its new findings of fair use, but the district court did not abuse its discretion when it declined to reopen the record. Accordingly, the court affirmed the district court's order denying the publishers' request to reopen the record, but vacated the judgment entered on remand. Finally, the court vacated the district court's award of attorney's fees and costs and the underlying determination that the University was the prevailing party. View "Cambridge University Press v. Albert" on Justia Law

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The annotations contained in the Official Code of Georgia Annotated (OCGA), authored by the Georgia General Assembly and made an inextricable part of the official codification of Georgia's laws, may not be copyrighted by the State of Georgia. The Eleventh Circuit held that the annotations in the OCGA are sufficiently law-like so as to be properly regarded as sovereign work; the People are the ultimate authors of the annotations; and as a work of the People, the annotations are inherently public domain material and uncopyrightable. Accordingly, the court reversed the judgment of the district court and directed the judgment be entered for PRO, vacated the district court's order granting Georgia injunctive relief, and remanded for further proceedings. View "Code Revision Commissioner v. Public.Resource.Org, Inc." on Justia Law

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Yellowfin filed suit against Barker Boatworks and Kevin Barker, alleging claims for trade dress infringement and false designation of origin under Section 43(a) of the Lanham Act, common law unfair competition, common law trade dress infringement, and violation of Florida's Uniform Trade Secret Act (FUTSA). The Eleventh Circuit affirmed the district court's grant of summary judgment for defendants. The court, weighing the likelihood of confusion factors holistically, held that the district court did not err in holding that Yellowfin could not, as a matter of law, prove a likelihood of confusion between Barker Boatworks' trade dress and its own. Therefore, the court held that the district court properly rejected the rest of Yellowfin's claims related to trade dress and consumer confusion. The court rejected Yellowfin's claims under FUTSA and held that Yellowfin failed to show that Barker allegedly misappropriated Source Information and Customer Information trade secrets. View "Yellowfin Yachts, Inc. v. Barker Boatworks, LLC" on Justia Law

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This case arose from a dispute over the ownership of the mark "The Commodores." Defendant appealed an order granting judgment as a matter of law to CEC and converting a preliminary injunction into a permanent one against defendant and his corporation, Fifth Avenue. The Eleventh Circuit held that it lacked 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; when defendant left the band, he left behind his common-law rights to the marks and those rights remained with CEC; the scope of the injunction was not impermissibly broad; defendant's arguments about the validity of the federal registration of the marks were irrelevant to this determination; and defendant did not establish any affirmative defenses. Accordingly, the court affirmed the judgment. View "Commodores Entertainment Corp. v. McClary" on Justia Law

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Appellants, artists in the hip hop industry, appealed the dismissal of their copyright infringement case, arguing that their copyright registrations for a song were improperly invalidated under 17 U.S.C. 411 without a showing of scienter and that they made a proper showing of copyright ownership. The Eleventh Circuit held that it need not reach a decision on the ownership issue because the district court misapplied the law by invalidating the copyright registrations. In this case, the district court erred by sua sponte raising the issue of registration validity. Furthermore, the good faith inaccuracies in the song registrations should not preclude the undisputed authors from copyright protection, and appellants have met their burden of production for establishing a prima facie case of ownership and copyright validity. Therefore, the court reversed and remanded for further proceedings. View "Roberts v. Gordy" on Justia Law

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SCAD appealed the district court's grant of summary judgment in favor of Sportswear in an action where 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. The Eleventh Circuit reversed, holding that this case did 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 was not determinative. Therefore, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), controls, as it extends to protection for federally-registered service marks to goods. Accordingly, the court remanded for further proceedings. View "Savannah College of Art and Design, Inc. v. Sportswear, Inc." on Justia Law