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

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

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

This reverse-confusion trademark dispute involves Wreal and Amazon over the mark "FyreTV." Wreal describes its own FyreTV service as the “Netflix of Porn.” Amazon Fire TV is a hardware device used for streaming “mainstream” “general interest” video via Amazon’s own streaming service, “Instant Video,” or third-party streaming services such as Netflix. In this interlocutory appeal, Wreal challenges the district court's denial of a preliminary injunction. The court concluded that the district court did not abuse its discretion in determining that Wreal’s unexplained five month delay in seeking a preliminary injunction, by itself, fatally undermined any showing of irreparable injury. Because Wreal cannot establish reversible error with respect to the injury prong, the court need not consider whether the district court correctly analyzed the likelihood of success, the balance of harms, or the public interest. Accordingly, the court affirmed the judgment. View "Wreal, LLC v. Amazon.com, Inc." on Justia Law

FN filed a trademark infringement action against Clyde Armory over the use of the marks "SCAR" and "SCAR-Stock" in the firearms industry. On appeal, Clyde Armory challenges the district court's partial grant of summary judgment for FN, its grant of FN's motion to strike Clyde Armory’s jury demand, its denial of Clyde Armory’s motion to amend the proposed pretrial order, and its entry of judgment against Clyde Armory following a bench trial. The court rejected Clyde Armory's contention that the district court erred by: (1) finding that FN used SCAR as a mark in commerce before Clyde Armory began using SCAR-Stock; (2) finding that FN’s SCAR mark acquired distinctiveness through secondary meaning before Clyde Armory began using SCAR-Stock; and (3) finding that Clyde Armory used the SCAR-Stock mark in bad faith to take advantage of the popularity of FN’s SCAR mark, thus divesting it of any rights in the mark that it otherwise might have obtained. Accordingly, the court affirmed the district court on all issues raised on appeal. View "FN Herstal SA v. Clyde Armory Inc." on Justia Law

FIU filed suit against FNU for infringement of FIU’s trademarks, asserting six claims for relief: (1) federal trademark infringement under the Lanham Act, 15 U.S.C. 1114; (2) federal unfair competition, also under the Lanham Act, 15 U.S.C. 1125(a); (3) Florida trademark dilution and injury to business reputation, Fla. Stat. 495.151; (4) Florida trademark infringement, Fla. Stat. 495.131; (5) Florida common law trademark infringement and unfair competition; and (6) cancellation of State of Florida trademark registration, Fla. Stat. 495.101. The district court entered final judgment in favor of FNU and FIU timely appealed. The court concluded that it was more accurate and better to view the district court’s decision in this case as the entry of judgment after conducting a bench trial. The court affirmed the district court's denial of FIU’s federal trademark claim where the district court reasonably concluded that FNU’s adoption of its new name and acronym did not and would not likely cause consumer confusion; FIU's federal unfair competition claim and false association theory of liability fail; the court affirmed the district court’s denial of its dilution claim for the same reasons as the likelihood of confusion claim; and the court affirmed the district court's denial of the Florida trademark infringement, common law infringement, and unfair competition claim as well. View "FIU v. FNU" on Justia Law

Defendant appealed the district court's grant of an injunction requiring defendant to transfer to defendant four domain names he had registered in his own name and grant of plaintiff's motion for summary judgment on defendant's counterclaims. The court concluded that it lacked jurisdiction to entertain defendant's appeal under 28 U.S.C. 1291, because there are still pending claims brought against defendant under sections 43(a) and (c) of the Lanham Act, 15 U.S.C. 1125(a) and (c), and state law. The court concluded, however, that it has jurisdiction to review the district court's injunction under 28 U.S.C. 1292(a)(1). The court held that the re-registration of bydesignfurniture.com constituted a registration under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125, and that plaintiff is likely to succeed on the merits of its ACPA claim. Accordingly, the court concluded that the issuance of the preliminary injunction did not constitute an abuse of discretion and affirmed the judgment of the district court. View "JYSK Bed'N Linen v. Dutta-Roy" on Justia Law

This appeal stems from an intellectual property dispute between two religious organizations. Plaintiff filed suit alleging that defendant is infringing its registered service marks in violation of the Lanham Act, 15 U.S.C. 1114, and Florida law. The district court granted judgment for defendant. In the first appeal, the court reversed in part and remanded for reconsideration of whether the parties' marks are likely to be confused. The court was also critical of disparaging comments that the district judge made about the parties. On remand, the court concluded that the district court misapplied several factors in its analysis of likely confusion, incorrectly assessed the Florida Priory’s defense of prior use, relied on historical testimony that the court previously deemed inadmissible, and misinterpreted the court's instructions about consulting facts outside the record. The court declined to order reassignment after balancing the three factors in United States v. Torkington. Accordingly, the court vacated and remanded. View "Sovereign Military Hospitaller v. The Florida Priory of the Knights Hospitallers" on Justia Law

After Dr. Paul B. Tartell and Dr. Lee M. Mandel split their practices, Dr. Mandel registered six domain names with variations of Dr. Tartell’s name. Dr. Tartell then filed a complaint against Dr. Mandel, his incorporated practice, and another corporation owned by Dr. Mandel for cybersquatting, false designation of origin, and unfair competition. The court concluded that the district court clearly erred by ruling that Dr. Tartell's name had acquired secondary meaning in the minds of consumers. Although Dr. Tartell produced some evidence relevant to the Conagra, Inc. v. Singleton factors, he failed to produce any substantial evidence of what his name denotes to the consumer; Dr. Tartell’s evidence about the use of his name in academic settings and evidence about his reputation among other medical professionals are not probative of whether his name had acquired secondary meaning; Dr. Tartell produced no substantial evidence to demonstrate the degree of actual recognition by the public; and Dr. Tartell’s remaining evidence says nothing about the perceptions of consumers. Accordingly, the court reversed and rendered judgment in favor of Dr. Mandel and his corporations. View "Tartell v. South Florida Sinus and Allergy Ctr." on Justia Law

After certification to the Supreme Court of Florida, the Supreme Court of Florida answered the following question in the affirmative: Does the Florida Virtual School’s statutory authority to “acquire, enjoy, use, and dispose of . . . trademarks and any licenses and other rights or interests thereunder or therein,” and the designation of its board of trustees as a “body corporate with all the powers of a body corporate and such authority as is needed for the proper operation and improvement of the Florida Virtual School,” necessarily include the authority to file an action to protect those trademarks? Given the Supreme Court of Florida's ruling, Florida Virtual School has the authority, and the standing, to file an action to protect its trademarks. Accordingly, the court reversed the district court's dismissal of Florida Virtual School's trademark infringement suit against K12 and K12 Florida, and remanded for further proceedings. View "Florida Virtual School v. K12, Inc., et al." on Justia Law

Louis Vuitton filed a federal trademark infringement suit against defendant for operating websites that were selling counterfeit Louis Vuitton bags. On appeal, defendant challenged the district court's denial of his motion to vacate a default judgment entered against him. The court concluded that, under the unrebutted allegations and testimony, the district court in Florida did not violate the Due Process Clause by exercising personal jurisdiction over defendant for Louis Vuitton's trademark infringement claims. The district court did not err in denying defendant's motion to vacate the default judgment because the statutory and federal constitutional personal jurisdiction requirements were satisfied. Accordingly, the court affirmed the judgment of the district court. View "Louis Vuitton Malletier, S.A. v. Mosseri" on Justia Law