In re: Rearden, LLC

The defendants in the underlying case, Rearden LLC, Rearden MOVA LLC, MO2, LLC, and MOVA, LLC, petition for a writ of mandamus to challenge the district court’s order compelling them to produce allegedly privileged documents. We conclude we have jurisdiction to decide their petition. We further conclude that petitioners’ arguments fail to carry the high burden required on mandamus to overturn the district court’s discovery determination. We therefore deny their petition.

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Cortes-Ramos v. Sony Corp. of America

Luis Adrián Cortés Ramos ("Cortés") appeals from the dismissal of his contract and intellectual property claims against a variety of companies affiliated with Sony Music Entertainment ("Sony"). The dispute concerns an original song and music video that Cortés submitted to Sony as part of a songwriting contest sponsored by Sony. The District Court dismissed all of Cortés's claims. It did so on two grounds: that the claims were subject to mandatory arbitration under the Federal Arbitration Act, and that Cortés failed to allege facts sufficient to support his claims under Fed. R. Civ. P. 12(b)(6). Because Cortés has not appealed the ruling that his claims must be arbitrated, we affirm the order compelling arbitration.

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FIU v. FNU

At issue in this trademark case is whether Florida National University, Inc. (“FNU”), infringed the trademark rights of Florida International University (“FIU”) in its registered trademark “FLORIDA INTERNATIONAL UNVERSITY” or committed unfair competition when FNU changed its name from “Florida National College” to “Florida National University.” After thorough review and with the benefit of oral argument, we affirm the district court’s entry of final judgment in favor of FNU on all claims.

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Trader Joe's Co. v. Hallatt

Lanham Act / Extraterritorial Application. The panel affirmed in part and reversed in part the district court’s dismissal of trademark infringement and unfair competition claims for lack of subject-matter jurisdiction. Defendant Michael Norman Hallatt purchased Trader Joe’s-branded goods in Washington State, transported them to Canada, and resold them there in a store he designed to mimic a Trader Joe’s store. Trader Joe’s sued under the Lanham Act and Washington law. Reversing the dismissal of the Lanham Act claims, the panel held that the extraterritorial reach of the Lanham Act raises a question relating to the merits of a trademark claim, not to federal courts’ subject-matter jurisdiction. On the merits, the panel concluded that Trader Joe’s alleged a nexus between Hallett’s conduct and American commerce sufficient to warrant extraterritorial application of the Lanham Act. The panel affirmed the dismissal of the state law claims because Trader Joe’s did not allege trademark dilution in Washington or harm to a Washington resident or business. The panel remanded the case to the district court for further proceedings.

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Forney Industries v. Daco of Missouri

The district court granted summary judgment to KDAR and we affirm. Forney’s use of color, which was not associated with any particular shape, pattern, or design, was not adequately defined to be inherently distinctive, and Forney failed to produce sufficient evidence that its use of color in its line of products had acquired secondary meaning (that is, that the relevant public understood those colors to identify Forney as the source).

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S.C. Johnson & Son, Inc. v. Nutraceutical Corp.

The district court abused its discretion when it entertained S.C. Johnson’s post-trial argument that Nutraceutical failed to prove continuous use of the BUG OFF mark after 2012. Because the district court did not clearly err in finding that Nutraceutical maintained continuous use prior to 2012, S.C. Johnson’s judgment cannot be saved. We therefore REVERSE and order that the injunction against Nutraceutical be VACATED forthwith.

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Diamond State Tire, Inc. v. Diamond Town Tire Pros & Auto Care, LLC

Two words, “Diamond” and “Tire,” incorporated within the names of two Delaware businesses, have been the focus and drivers of expedited litigation in this Court. Diamond State Tire, Inc. (“Diamond State”) alleges that Diamond Town Tire Pros & Auto Care LLC (“Diamond Town”) has violated Delaware’s Deceptive Trade Practices Act (“the Act”) by operating under a business name that creates a “likelihood of confusion” between the two businesses among vendors, customers and potential customers.

Diamond State seeks a permanent injunction banning Diamond Town from continuing to operate under that trade name. Unfortunately, no effort was made by the parties to reach an accommodation outside of litigation. And so the matter proceeded to trial. This is the court’s post trial decision after considering the parties’ pre-trial briefs, the pretrial stipulation and order, the testimony Ed Long, Todd Miller, Jamie Barns and Kristen Krenzer and the trial exhibits submitted by the parties. For the reasons that follow, I find that Diamond State has failed to prove a claim under the Act. Judgment will be entered for Diamond Town.

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Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Credito Oriental

Four years ago, we affirmed a judgment that a Puerto Rico credit union (in Spanish, a "cooperativa") infringed on the trademark rights of a competing bank by adopting a confusingly similar logo and trade dress. Oriental Fin. Grp., Inc. v. Cooperativa de Ahorro y Crédito Oriental, 698 F.3d 9 (1st Cir. 2012) ("Oriental I"). In this subsequent appeal, we consider whether the credit union also infringed the bank's word mark and trade name ORIENTAL with its competing marks COOP ORIENTAL, COOPERATIVA ORIENTAL, ORIENTAL POP, and CLUB DE ORIENTALITO. Notwithstanding the similarity between them, the district court found that the latter marks did not infringe upon the former, and refused to enjoin their use.

With regard to COOP ORIENTAL, COOPERATIVA ORIENTAL, and ORIENTAL POP, the district court's determination of noninfringement was clearly erroneous. We reverse that portion of the judgment and remand for reconsideration of whether the injunction should be expanded to remedy the infringing use of those marks. We conclude, however, that the district court's determination is supportable as to CLUB DE ORIENTALITO, and affirm that portion of the judgment.

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