Creative Protection

B & B Hardware v. Hargis Industries, et al

Following our prior remand, B&B Hardware, Inc. v. Hargis Industries, Inc., 569 F.3d 383 (8th Cir. 2009), the district court conducted a seven-day jury trial on B&B Hardware’s (“B&B”) claim of trademark infringement and unfair competition and on Hargis Industries’ (“Hargis”) counterclaims of false advertising and false designation of origin. The jury returned a verdict which rejected B&B’s claims but found in favor of Hargis on its counterclaims. After the district court entered judgment on the jury’s verdict, it awarded attorney fees and costs to Hargis. B&B now appeals, arguing that the district court should have given preclusive effect to the Trademark Trial and Appeal Board’s (“TTAB”) findings concerning the likelihood of confusion of the two companies’ tradmarks. B&B also appeals the award of attorney fees and costs. We affirm the decision of the district court except as to attorney fees. On the matter of attorney fees, we remand for recalculation of those fees.

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Klein-Becker USA v. Englert

Klein-Becker USA and Klein-Becker IP Holdings (collectively “Klein-Becker”) sued Patrick Englert and Mr. Finest, Inc., for trademark infringement, copyright infringement, false advertising, and unfair competition under the Lanham Act; false advertising under the Utah Truth in Advertising Act; unfair competition under the Utah Unfair Practices Act; fraud; civil conspiracy; and intentional interference with existing and prospective business relations. Mr. Englert was sanctioned several times for failing to comply with court orders and discovery schedules.1 The third and final sanction resulted in the entry of default judgment for Klein-Becker on all remaining claims. A bench trial determined damages.

Mr. Englert appeals the district court’s entry of default judgment against him, determination of his personal liability and the amount of damages owed, grant of a permanent injunction, denial of a jury trial, and refusal to allow Mr. Englert to call a certain witness. Exercising jurisdiction under 28 U.S.C. § 1291, we affirm.

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Daniels Health Sciences, L.L.C v. Vascular Health Sciences, L.L.C.

This dispute arises from the marketing and sale of the cardiovascular health drug Arterosil. Daniels Health Sciences (“DHS”) engaged Vascular Health Sciences (“VHS”) to market and sell the drug Provasca. After that relationship ended, VHS began to manufacture, market, and sell Arterosil, a product similar in many respects to Provasca. DHS sued VHS for misappropriation of trade secrets, breach of contract, and trademark violations. The district court first granted a temporary restraining order on the grounds that DHS would likely succeed on its breach of contract and misappropriation of trade secrets claims. It later granted a preliminary injunction on the same grounds, also finding a substantial threat of irreparable injury absent an injunction, that the balance of hardships favored the plaintiff, and that the public interest would not be disserved by a grant of injunctive relief. VHS filed a motion in this court requesting a stay of the injunction, which was granted, and now appeals the grant of the preliminary injunction and its scope. We AFFIRM the preliminary injunction, lift the stay, and remand to the district court with instructions to expedite trial and to attempt to narrow its preliminary injunction.

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Stayart v. Google Inc.

Dissatisfied with the results of internet searches for her name, Beverly Stayart has launched a legal campaign against internet search engines. In this, her third lawsuit, she contends that Google is in violation of Wisconsin misappropriation laws because a search for “bev stayart” may lead to a search for “bev stayart levitra,” which in turn may lead to websites advertising drugs to treat male erectile dysfunction. The district court dismissed her lawsuit for failure to state a plausible claim for relief and she appeals. However, Stayart has not articulated a set of facts that can plausibly lead to relief under Wisconsin’s misappropriation laws because the use she alleges falls within two exceptions: public interest and incidental use. First, Stayart made the challenged search phrase “bev stayart levitra” a matter of public interest by suing Yahoo! over it in 2010. And as a matter of public interest, that phrase cannot serve as the basis of a misappropriation suit. In addition, Stayart has not pled any facts showing a substantial connection between Google’s use of her name and its efforts to generate advertising revenues, triggering the incidental-use exception to Wisconsin’s misappropriation laws. For these reasons, we affirm.

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Georgia Pacific Consumer Products, LP v. von Drehle Corp.

In our previous consideration of this trademark infringement dispute between plaintiff Georgia-Pacific Consumer Products, LP (Georgia-Pacific) and von Drehle Corporation (von Drehle), we vacated the district court’s award of summary judgment in von Drehle’s favor, and remanded the casefor a jury determination whether von Drehle was liable for contributory trademark infringement. Georgia Pacific Consumer Prods., LP v. Von Drehle Corp., 618 F.3d 441 (4th Cir. 2010). More than three months after we issued that decision, von Drehle sought for the first time to amend its answer to include the affirmative defenses of claim preclusion and issue preclusion (the preclusion defenses). These defenses were based on the purportedly preclusive effect of a judgment in favor of one of von Drehle’s distributors, which was entered by a federal district court in Arkansas a few weeks before the district court’s summary judgment determination that we vacated in the earlier appeal.

 

The district court initially denied von Drehle’s request to amend its pleadings to assert the preclusion defenses, finding that the request was untimely and was prejudicial to Georgia- Pacific. The matter proceeded to a jury trial, resulting in a verdict in Georgia-Pacific’s favor. Thereafter, the district court issued an order vacating the jury verdict and awarding judgment in von Drehle’s favor, relying on the preclusion defenses arising from the Arkansas case that the district court earlier had rejected. Georgia-Pacific Consumer Prods. LP v. Von Drehle Corp., 856 F. Supp. 2d 750 (E.D.N.C. 2012). Georgia-Pacific appeals from the district court’s judgment in favor of von Drehle.

Upon our review, we hold that the district court erred in vacating the jury verdict and in awarding judgment in von Drehle’s favor. We reach this decision because: (1) von Drehle waived the preclusion defenses by failing to assert them in a timely manner; and (2) the district court erred in alternatively considering the preclusion defenses sua sponte. Accordingly, we vacate the district court’s award of judgment in von Drehle’s favor, and we remand the case to the district court with instructions to reinstate the jury’s verdict in favor of Georgia-Pacific.

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Yellowbook Inc. v. Brandeberry

This case involves a trademark dispute over the right to use the “AMTEL” name and marks for phonebooks in various Ohio counties. In 2002, Defendant Steven Brandeberry sold his phonebook business, operated under the name AMTEL, to Barney White, who in turn sold the business to Yellowbook, a national publisher of yellow-pages directories. In 2009, Brandeberry decided to start a rival phonebook under the AMTEL name. Yellowbook brought this trademark-infringement suit; we must decide whether exclusive rights to AMTEL were transferred in the sale to White (and thus to Yellowbook). The district court found that when Brandeberry initially purchased the rights to the AMTEL mark the rights were transferred to both him individually and his corporation, American Telephone Directories, Inc. (“American Telephone”). The court then reasoned that since the sale to White did not involve Brandeberry in an individual capacity, Brandeberry retained his individual rights, and White received only a non-exclusive right to use the mark. Yellowbook argues that the contract should be read to have transferred the entire ownership of the mark and that in any case Brandeberry abandoned his right to the mark. However, the initial contract cannot be read to create joint ownership, and trademark law would not permit joint ownership under the facts in this case. As a result, the contract with White transferred exclusive ownership of the mark and, even if it did not, Brandeberry’s rights were abandoned. Therefore, the judgment of the district court is reversed and remanded for grant of injunctive relief and determination of damages. In addition, the district court’s decision to deny attorney’s fees to Yellowbook is reversed and remanded for at least a partial grant of fees, because the deficiencies in Yellowbook’s motion are not sufficiently egregious to warrant complete denial.

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Tiffany sues Costco over sales of engagement rings

By Bernard Vaughan and Jonathan Stempel

Feb 14 (Reuters) - Tiffany & Co sued Costco Wholesale Corp on Thursday to stop the largest U.S. warehouse club chain from selling what it called counterfeit diamond engagement rings bearing the luxury retailer's name.

The trademark lawsuit filed in Manhattan federal court also calls on Costco to forfeit profits from the ring sales, plus damages of $2 million per infringement.

Tiffany said it believes hundreds, if not thousands, of Costco members bought engagement rings they believed were authentic Tiffany products but in fact were not.

Full story.

Mattel, Inc., et al v. MGA Entertainment, Inc.

MGA’s claim of trade-secret misappropriation was not logically related to Mattel’s counterclaim; we therefore reverse the district court’s holding that MGA’s counterclaim- in-reply was compulsory. Because the district court did not abuse its discretion in awarding fees and costs under the Copyright Act, we affirm that award.

While this may not be the last word on the subject, perhaps Mattel and MGA can take a lesson from their target demographic: Play nice.

AFFIRMED IN PART, REVERSED IN PART AND REMANDED.

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Swarovski Aktiengesellschaft v. Building #19, Inc.

ut we need not decide that question to decide this case. Whether or not the presumption of irreparable harm remains viable in this context, it is difficult to see how irreparable harm could be established without a finding of confusion, and so the district court's decision did not include adequate findings to support its grant of the injunction against Building #19. Cf. Am. Bd. of Psychiatry and Neurology, 129 F.3d at 3 ("[A] trademark plaintiff who demonstrates a likelihood of success on the merits creates a presumption of irreparable harm.") (emphasis added).

In further proceedings on the claims for permanent injunctive relief, the district court might conclude, as Swarovski suggests in its brief, that Swarovski has presented sufficient evidence to establish irreparable harm to its luxury reputation without the benefit of the presumption, or that the facts of this case are so similar to past cases "that a presumption of irreparable injury is an appropriate exercise of its discretion in light of the historical traditions." N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1228 (11th Cir. 2008) (citing eBay, 547 U.S. at 394-97 (concurring opinions of Chief Justice Roberts and Justice Kennedy)).

"Where the district court . . . has not addressed a relevant and required issue," we may "remand the case to the district court for further consideration." Bos. Duck Tours, LP, 531 F.3d at 15. In this case, the district court did not include the necessary findings, first, on whether Swarovski was likely to succeed in its infringement claim against Building #19 by establishing that the proposed advertisement was likely to confuse consumers, and second, on whether Swarovski would suffer irreparable harm as a result of the ad. Because affirmative findings on both questions are required for a district court to issue a preliminary injunction, see Weikert, 504 F.3d at 5, we reverse the preliminary injunction against Building #19 and remand the case to the district court for further proceedings on the remaining claims for relief consistent with this opinion.

It is so ordered.

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Already, LLC v. Nike, Inc.

Nike filed this suit, alleging that two of Already’s athletic shoes violated Nike’s Air Force 1 trademark. Already denied the allegations and filed a counterclaim challenging the validity of Nike’s Air Force 1 trademark. While the suit was pending, Nike issued a “Covenant Not to Sue,” promising not to raise any trademark or unfair competition claims against Already or any affiliated entity based on Already’s existing footwear designs, or any future Already designs that constituted a “colorable imitation” of Already’s current products. Nike then moved to dismiss its claims with prejudice, and to dismiss Already’s counterclaim without prejudice on the ground that the covenant had extinguished the case or controversy. Already opposed dismissal of its counterclaim, contending that Nike had not established that its covenant had mooted the case. In support, Already presented an affidavit from its president, stating that Already planned to introduce new versions of its lines into the market; affidavits from three potential investors, asserting that they would not consider investing in Already until Nike’s trademark was invalidated; and an affidavit from an Already executive, stating that Nike had intimidated retailers into refusing to carry Already’s shoes. The District Court dismissed Already’s counterclaim, concluding that there was no longer a justiciable controversy. The Second Circuit affirmed. It explained that the covenant was broadly drafted; that the court could not conceive of a shoe that would infringe Nike’s trademark yet not fall within the covenant; and that Already had not asserted any intent to market such a shoe.

Held: This case is moot. 663 F. 3d 89, affirmed.

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