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

Bruce Munro and his studio appealed the district court's dismissal of his complaint against Lucy and the denial of his motion to amend his complaint. Munro's claims stemmed from Lucy's "Light Forest" exhibition and advertising campaign that infringed on Munro's works. The Eighth Circuit affirm the district court's decision to dismiss Munro's trade dress, fraud, and tortious interference claims as well as its denial of Munro's motion to amend these claims because the proposed amendments were futile. The court held, however, that Munro sufficiently pleaded a trademark claim so as to survive a motion to dismiss for failure to state a claim. Accordingly, the court reversed in part, affirmed in part, and remanded for further proceedings. View "Munro v. Lucy Activewear, Inc." on Justia Law

The Eighth Circuit considered this trademark dispute on remand. In the previous appeal, the court asked the district court to address state-law questions pertaining to the availability of attorney's fees and the ownership of a contested trademark. The district court entered orders on those questions and this appeal followed. The court held that the district court erred in determining plaintiff was entitled to attorney's fees under Iowa common law. In this case, defendant's misrepresentation to the patent office was improper, but its conduct did not rise to the level of being tyrannical, cruel, or harsh under Iowa common law. Finally, the briefs and oral arguments lead the court to conclude that defendant owned a license to use the PAKSTER mark in connection with injection-molded chicken coops, injection-molded egg baskets, and injection-molded egg flats. Accordingly, the court reversed and remanded with instructions. View "East Iowa Plastics, Inc. v. PI, Inc." on Justia Law

The Eighth Circuit affirmed the district court's grant of summary judgment to PWD on a trademark infringement claim filed by ZW, another company that sells plastic bags for picking up and disposing of dog waste. The court held that ZW failed to produce any evidence from which a jury could find that consumers were likely to confuse ZW's ONEPUL wicket bags with PWD's BagSpot "one-pull" wicket bags. In regard to PWD's counterclaim that ZW's marks were invalid, the court held that there was a fact dispute as to whether the ONEPUL mark was generic or descriptive. Therefore, the court reversed as to the validity claim and remanded for further proceedings. View "ZW USA, Inc. v. PWD Systems, LLC" on Justia Law

The court affirmed the grant of a permanent injunction enjoining BC Cleaners from using Martinizing's trademarks, concluding that Martinizing failed to prove willful infringement by BC Cleaners. Because Martinizing failed to prove that it was entitled to monetary remedies against BC Cleaners, the individual defendants were likewise not liable for damages, an accounting for profits, and attorneys' fees. The court also concluded that the district court did not abuse its discretion in not granting injunctive relief against the individual defendants, because BC Cleaners had agreed to stop using the trademarks. Therefore, the court reversed as to these issues; affirmed the denial of a default judgment against Defendants Lundell and Carver; and remanded with directions to enter amended judgments. View "Martinizing International v. BC Cleaners" on Justia Law

Warner filed suit claiming that AVELA infringed their trademarks and engaged in unfair competition by licensing iconic pictures and phrases from films. On appeal, AVELA challenges a permanent injunction prohibiting them from licensing images from the films Gone with the Wind and The Wizard of Oz, as well as the animated short films featuring cat-and-mouse duo Tom and Jerry. The court concluded that AVELA’s Seventh Amendment claim is not properly before the court and thus the court declined to consider it; the court rejected AVELA's alternative claim that the $2,570,000 statutory damages award is disproportionate to the offense, insufficiently reasoned, and in violation of this court’s ruling in the previous appeal; the doctrine of judicial admissions does not bar Warner’s trademark claims; likewise, judicial estoppel does not apply; Dastar Corp. v. Twentieth Century Fox Film Corp. does not bar Warner's trademark claims; AVELA has waived the functionality and fair use defenses; the likelihood of confusion does not always require a jury trial and, on the merits, the district court did not err by rendering summary judgment on the likelihood of confusion; the court rejected AVELA's challenges to the permanent injunction; and the district court’s order is not inconsistent with the court's ruling in the prior appeal. Accordingly, the court affirmed the judgment. View "Warner Bros. Entertainment v. X One X Productions" on Justia Law

EIP filed suit against PI, alleging claims related to the PAKSTER mark under the Lanham Act, 15 U.S.C. 119, 1120, and 1125(a). PI filed counterclaims for trademark infringement and unfair competition under the Lanham Act. The district court then issued findings of fact and conclusions of law. As relevant to this appeal, the district court cancelled PI’s two federal trademark registrations and found that EIP was the prevailing party. PI now appeals the grant of attorney's fees. The court concluded that the district court lacked jurisdiction to cancel the federal registrations of PI’s trademarks, and vacated the cancellation. Having obtained no damages, injunction, or cancellation from its section 38 claim, there is no basis for concluding that EIP was the prevailing party on that claim, which EIP agrees is a precondition to receiving attorney’s fees. As a result, the court need not reach PI’s argument that attorney’s fees are not available under section 38 of the Lanham Act. The court also concluded that, because EIP was not the “prevailing party” with respect to PI’s trademark infringement and unfair competition counterclaims, it is not entitled to attorney’s fees under section 35 of the Lanham Act. Finally, the court remanded the case for further consideration of the issue of whether EIP should obtain attorney's fees because it successfully obtained a declaration that it owned the PAKSTER trademark. Accordingly, the court vacated in part, reversed in part, and remanded. View "East Iowa Plastics, Inc. v. PI, Inc." on Justia Law

Plaintiffs, twenty-three professional football players, filed a putative class action against the NFL, claiming that films produced by NFL-affiliate NFL Films violated the players’ rights under the right-of-publicity laws of various states as well as their rights under the Lanham Act, 15 U.S.C. 1125. Twenty plaintiffs settled, but appellants elected to opt out of the settlement and pursued individual right-of-publicity and Lanham Act claims. The district court granted summary judgment for the NFL. Applying the three Porous Media Corp. v. Pall Corp. factors, the court agreed with the district court’s conclusion that the films are expressive, rather than commercial speech and that the Copyright Act, 17 U.S.C. 301(a), therefore preempts appellants’ claims. The court also concluded that appellants' claim of false endorsement under the Lanham Act fails as a matter of law because appellants provide no evidence that the films contain misleading or false statements regarding their current endorsement of the NFL. Accordingly, the court affirmed the judgment. View "Dryer v. National Football League" on Justia Law

In April 2011, while its patent application was pending with the USPTO, U.S. Water Services, which “sell[s] water treatment and purification equipment, materials, and services,” especially “to ethanol process technologies,” sued its competitor, ChemTreat, for misappropriation of trade secrets. In October 2011, the USPTO issued the 244 patent covering a method to reduce the formation of insoluble scale deposits during the production of ethanol using enzyme, phytase, in its “pHytOUT® system.”Three days before U.S. Water and ChemTreat settled the misappropriation claim, ChemTreat filed counterclaims requesting declaratory judgments of noninfringement and invalidity of the 244 patent. The suit was filed before the Leahy-Smith America Invents Act, 125 Stat. 284, took effect, so the counterclaims independently did not establish appellate jurisdiction for the Federal Circuit. The district court granted ChemTreat summary judgment as to the noninfringement counterclaim and dismissed the invalidity counterclaim. The Eighth Circuit affirmed. Evaluating the “totality of [the] circumstances,” the district court did not err in finding the misappropriation action, together with U.S. Water’s statements to its customers and supplier, produced an objective, “reasonable apprehension of suit,” and did not err in concluding declaratory judgment subject matter jurisdiction existed. The decision did not constitute an advisory opinion. View "U.S. Water Servs., Inc. v. ChemTreat, Inc." on Justia Law

A class action complaint alleged that for many years the commercial filmmaking wing of the NFL used the names, images, likenesses, and identities of former NFL players in videos to generate revenue and promote the NFL. It asserted claims for false endorsement (Lanham Act, 15 U.S.C. 1125), common law and statutory rights of publicity claims under several states' laws, and unjust enrichment. The court approved a settlement calling for: creation of the Common Good Entity, a non-profit organization; payment of up to $42 million to the Common Good Entity over eight years; establishment of the Licensing Agency; payment of $100,000 worth of media value to the Licensing Agency each year until 2021; (5) Payment of attorneys' fees and settlement administration expenses; a reserve for the NFL's potential fees and costs involving class members who opt out; and class members' perpetual release of claims and publicity rights for the NFL and related entities to use. The Common Good Entity is "dedicated to supporting and promoting the health and welfare of Retired Players and other similarly situated individuals." Six players (the class had about 25,000 members) objected. The Eighth Circuit affirmed, finding the settlement fair, reasonable, and adequate despite not providing for a direct financial payment to each class member. View "Marshall v. Nat'l Football League" on Justia Law

Steve "Wild Thing" Ray wrestled in the Universal Wrestling Federation (UWF) from 1990 to 1994. His matches were filmed. Ray specifically agreed that the films would be "sold and used." Since his retirement from the UWF, Ray has promoted healthcare products and weightlifting supplements. ESPN obtained films of his wrestling matches and re-telecast them throughout North America and Europe without obtaining his "consent to use [his] identity, likeness, name, nick name, or personality to depict him in any way." Ray does not allege that ESPN obtained the films unlawfully. Ray filed suit, asserting, under Missouri state law: invasion of privacy, misappropriation of name, infringement of the right of publicity, and interference with prospective economic advantage. The Eighth Circuit affirmed dismissal on the grounds of preemption by the Copyright Act, 17 U.S.C. 101. Ray's wrestling performances were part of the copyrighted material, and his likenesses could not be detached from the copyrighted performances contained in the films. Ray has not alleged that his name and likeness were used to promote or endorse any type of commercial product. His complaints are based solely on ESPN airing video recordings depicting him in a "work of authorship," which is plainly encompassed by copyright law. View "Ray v. ESPN, Inc." on Justia Law