Justia U.S. 8th Circuit Court of Appeals Opinion Summaries

Articles Posted in Intellectual Property
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Block, Inc. appealed from an order granting in part H&R Block, Inc. and HRB Innovations, Inc.’s (collectively, “H&R Block”) motion for a preliminary injunction. H&R Block claims that the use of “Block” and a green square logo in connection with tax services: (1) is likely to cause confusion because H&R Block and Block, Inc. both offer overlapping services, including tax preparation and filing, other related financial services, and charitable services; (2) has confused consumers, the media, and investors; and (3) will cause irreparable harm, as it will undermine H&R Block’s ability to control its public image and perception and lead consumers to incorrectly believe Block, Inc’s tax service is connected to H&R Block or one of the “building blocks” in the Block, Inc. family of brands.   The Eighth Circuit reversed and vacated the preliminary injunction. The court explained that H&R Block failed to satisfy its burden because the evidence in the record is inadequate to establish substantial consumer confusion by an appreciable number of ordinary consumers, nor irreparable harm that is concrete and imminent. The court wrote that if there is, in fact, trademark infringement, H&R Block will have a full opportunity to demonstrate that infringement at a trial on the merits. View "H&R Block, Inc. v. Block, Inc." on Justia Law

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Five months after being sued in Oregon for trademark infringement, Jacob Rieger & Co., LLC provided notice to its liability insurer, Cincinnati Insurance Company. Due to Rieger’s delay, Cincinnati refused to reimburse Rieger’s legal fees for the five months that Cincinnati was unaware of the lawsuit. The Oregon case was ultimately dismissed for lack of jurisdiction. Instead of waiting to be sued in a court that did have jurisdiction, Rieger’s parent company, GSP Licensing LLC, filed a new suit in Missouri as the plaintiff. GSP was not named under Rieger’s insurance policy, so Cincinnati denied coverage for the Missouri case. Cincinnati then filed this lawsuit, seeking a declaration of coverage. The district court granted summary judgment to Cincinnati.   The Eighth Circuit reversed in part the district court’s grant of summary judgment to Cincinnati. The court affirmed the dismissal of Rieger’s tort claims and the imposition of sanctions. The court explained that under Missouri law, a tort claim is independent of a contract claim if the tort claim can succeed without regard to the outcome of the contract claim. In other words, the tort claim could succeed regardless of the outcome of the contract claim. Here, Rieger admits that its tort claims would fail if its contract claim succeeded. By Rieger’s own admission, the court found that the district court properly dismissed Rieger’s tort claims. View "Cincinnati Insurance Company v. Jacob Rieger & Co., LLC" on Justia Law

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Pocket Plus, LLC, sued Pike Brands, LLC (“Running Buddy”) for trade-dress infringement of Pocket Plus’s portable pouch. The district court granted summary judgment to Running Buddy and awarded it a portion of its requested attorney fees. Pocket Plus appealed the summary judgment, and both parties appeal the attorney fees award.   The Eighth Circuit affirmed. The court wrote there is no genuine dispute that Pocket Plus’s trade dress is functional and thus not protected by trademark law. To grant trade-dress protection for Pocket Plus would be to hand it a monopoly over the “best” portable-pouch design. Trademark law precludes that. Further, Running Buddy argued that the district court abused its discretion in awarding only a portion of the requested fees. The court found no abuse of discretion in finding that this was an exceptional case. It considered the appropriate law, reviewed the litigation history, held a hearing, and explained its decision. View "Pocket Plus, LLC v. Pike Brands, LLC" on Justia Law

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Plaintiff, Prince’s photographer, claims his former collaborators and a potential investor in a book project kept his photographs and used them without permission. He sued. The district court granted summary judgment to Defendants on all claims. Plaintiff appealed.   The district court granted summary judgment to all defendants. Beaulieu appeals the judgment and the costs awarded to Defendant. Plaintiff presented two possible theories of conversion. The first is an ongoing conversion, that the collaborators still have his photos. The second is a technical conversion, that the collaborators kept his photos for several months after he demanded their return.   The Eighth Circuit affirmed. The court explained Plaintiff has not given a firm inventory of how many photos he believes are missing. An extensive forensic protocol did not identify any of his materials in their possession or any wrongful use. Plaintiff provides nothing more than speculation and suspicion against Defendants. While Plaintiff has a method for counting the total number of his photos, this is not sufficient to substantiate his allegations.   Further, in regards to Plaintiff’s copyright infringement claim, the court explained silence, coupled with continued and normal interactions between him and the collaborators, implied his approval of the marketing plan and the corresponding distribution of his images, and thus showed an implied license. Finally, the court wrote that since Defendants prevailed in showing there was no issue of material fact about the conversion claim or the copyright claim, they also prevail on the tortious interference claim because there is no underlying improper conduct. View "Allen Beaulieu v. Clint Stockwell" on Justia Law

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Brothers and Sisters in Christ, LLC (BASIC) allege that Zazzle, Inc. sold a t-shirt that infringed on BASIC’s federal trademark. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction. The Eighth Circuit affirmed. The court explained that BASIC bears the burden of establishing a prima facie showing of jurisdiction. Further, where the applicable federal statute, here the Lanham Act, does not authorize nationwide personal jurisdiction the existence of personal jurisdiction depends on the long-arm statute of the forum state and the federal Due Process Clause.   Here, the court looked to Zazzle’s contacts with Missouri related to BASIC’s claims. Aside from the single t-shirt sale, BASIC fails to allege a connection between Zazzle’s other contacts with Missouri and the underlying suit. BASIC does not allege that Zazzle’s other activities in Missouri involved trademark infringement or that Zazzle sold additional trademark-infringing goods into the state. Further, BASIC has not alleged that Zazzle took such purposeful, targeted action toward Missouri or Missouri consumers. Although Missouri has an interest in this litigation because the allegedly injured plaintiff is a Missouri company, the convenience of the parties is neutral, as Zazzle would be inconvenienced by litigation in Missouri and BASIC would likely be inconvenienced in an alternate forum. In sum, BASIC has failed to allege that Zazzle could reasonably anticipate being haled into court in Missouri. View "Brothers and Sisters in Christ v. Zazzle, Inc." on Justia Law

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Cardiovascular Systems, Inc. (“CSI”) brought this action against Cardio Flow, Inc. (“Cardio Flow”), alleging the breach of a settlement agreement that resolved ownership of intellectual property rights related to atherectomy devices. Cardio Flow was not a named party to the settlement, however, and moved for summary judgment on that basis. In response, CSI asserted that principles of equitable estoppel and agency bound Cardio Flow to abide by the agreement.   The district court rejected CSI’s arguments and dismissed its claims and the Eighth Circuit affirmed. The court held that equitable estoppel provides no basis to enforce the settlement agreement against Cardio Flow. The court reasoned that the doctrine of equitable estoppel generally involves some type of misrepresentation. Given the Minnesota Supreme Court’s unequivocal holdings elsewhere that a representation or concealment is essential, the court declined to supplant the usual equitable estoppel elements.   Further, the party who signed the agreement with Plaintiff was not acting as Defendant's agent when she signed the settlement; there was no joint venture between the signer and Defendant, and Defendant did not control the signer's lawsuit against Plaintiff which led to the settlement agreement. View "Cardiovascular Systems, Inc. v. Cardio Flow, Inc." on Justia Law

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Tumey filed suit alleging that Tumey's representation of Voice Tech Corporation in pending and separate patent infringement lawsuits against Mycroft prompted Mycroft to retaliate by launching and/or inspiring a series of cyber-attacks against Tumey. The complaint alleges violations of the Racketeer Influenced and Corrupt Organization Act, the Computer Fraud and Abuse Act, the Stored Wire and Electronic Communications Act, and various state and common law claims.The Eighth Circuit applied the Dataphase factors and vacated the district court's grant of preliminary injunctive relief to Tumey, concluding that Tumey did not show a likelihood of success on the merits of its claims. In this case, even if there was no procedural due process issue, the district court committed a clear error of judgment when it issued a preliminary injunction based on a lack of evidence demonstrating Mycroft was responsible for the conduct at issue. Furthermore, even if Tumey came forward with sufficient evidence to connect Mycroft to the unlawful acts, Tumey has not convinced the court that money damages are insufficient to compensate him for the alleged injuries. The court found that this is a rare case in which the history, proceedings, and order reflect a sufficiently high degree of antagonism against Mycroft to warrant reassignment of the case on remand. View "Tumey v. Mycroft AI, Inc." on Justia Law

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Boor and Edson owned Brava, which had intellectual property and technical knowledge related to composite roofing. Wildhawk inquired about purchasing Brava. Boor proposed “an exclusive license for manufacturing current roofing products” with “a right of first refusal on all new product [d]evelopments.” The parties executed asset purchase and license agreements. Wildhawk paid $4 million and obtained an automatic license to “any Improvements” to the technology, whether patentable or not. Before executing the agreement, the parties removed a “New Product” section as required by Wildhawk’s lender but entered into an oral agreement for a right of first refusal. Wildhawk retained Boor and Edson as paid consultants, with non-compete agreements.Boor notified Wildhawk: “As per our handshake agreement” we offer you first right of refusal “on the below products.” The parties entered into a confidentiality and nondisclosure agreement regarding “possible R&D ‘new or enhanced product’ agreements.” They negotiated but failed to reach an agreement. Boor and Edson formed Paragon while Boor was still employed by Wildhawk. Paragon began producing the new products.Wildhawk sued. The district court granted Wildhawk a preliminary injunction, prohibiting Paragon from manufacturing or selling composite roofing. The Eighth Circuit vacated. Wildhawk had a fair chance of proving the defendants violated the agreement but the district court erred in rejecting an equitable estoppel defense. Wildhawk waited until Paragon had been producing the products for 10 months before making its claim, failing to show either reasonable diligence or harm that cannot be compensated by damages. View "Wildhawk Investments, LLC v. Brava I.P., LLC" on Justia Law

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The Eighth Circuit dismissed, based on lack of jurisdiction, plaintiffs' appeal of a district court order staying a federal action for trademark infringement and unfair competition pending resolution of common trademark license issues in a long-pending state court litigation between the parties. The court concluded that the stay order is neither a final order under 28 U.S.C. 1291 nor a collateral interlocutory order that may be appealed. In this case, the district court did not abuse its discretion in concluding that if the Lomax Parties prevail on their broad allegations in state court, then the state proceedings will fully dispose of the claims in federal court. View "Window World International v. O'Toole" on Justia Law

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Designworks filed suit alleging that defendants violated its copyright in the registered design of a two-story home. The district court granted summary judgment for defendants, concluding that defendants' home design was not a copy of the original Designworks home.The Eighth Circuit affirmed, concluding that the district court did not err in granting defendants' motion for summary judgment because the works were so dissimilar that reasonable minds could not differ as to the absence of substantial similarity in expression in the designs. The court explained that there was no direct evidence of copyright infringement and there was no evidence of a substantial similarity of expression in the designs. In this case, the district court's order emphasized how unreasonable Designworks' litigating position had been, from completely failing to address the "significant objective differences" between the designs to producing nothing more than speculative evidence that anyone associated with defendants had accessed the Designworks house. The court also affirmed the district court's award of attorneys' fees and costs to defendants. View "Designworks Homes, Inc. v. Thomson Sailors Homes, LLC" on Justia Law