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Federal Court Cases on Copyrights and Trademarks Listed by Federal Circuit with State Trademark Cases Included

There's a lot of information on the internet but it can take hours to locate what you want. Sometines, a really good page disappears when you go back to it. These are court cases we've found that we think have relevant information. In some cases all we have are notes about the cases. When possible we have the entire decision. Understanding the Federal Court System isn't all that easy. When someone posts information on the internet, they want it readily available to others. We help that along by archiving and reproducing the information and citing the source whenever possible. Information and education is the highway to freedom. With the individual cases we are also posting a synopsis called "Issues" to give you a "quickie" look at the case to see if you are interested. These cases were not selected becasue they presented earth-shaking decisions but more because the reasoning of the different courts presented arguments that you might be able to use in the future. Courts are persuaded more by logical arguments that support the facts of the case at hand than by emotional pleas. Most of these cases will also have relevant quotes after the "Issues" link. Why list so many court cases? So you can get an idea of what the courts are saying about something. While the different circuits may not agree on all issues (that is where the Supreme Court gets into the act) you will see that they are very close. While each case is different, the underlying application of the law is not. In the "Abreviations" (listed after "Issues") we have selectively gathered statements from these decisions that are relevant to the contemt of these pages. We attempt to present the "law" as it is applied; not the law as we would like it to be.

Court cases often cite many past cases and other legal references. To understand legal citations better, CLICK HERE. Courts are very conscious of precedent and follow previous rulings closely. If a circuit has no precedent if will draw from the decisions of other circuits. These cases were selected because they appear often in cases concerning intellectual property. We DO NOT select only cases that support our position as some people claim. Our position is based upon court decisions. For federal court cases presented alphabetically, click here. For federal court cases presented by Subject , click here. For federal court cases presented by Selected Quotes by Category, click here.

1st Circuit         Maine, Massachusetts, New Hampshire, Puerto Rico, Rhode Island WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir, 1991), WCVB televised the Boston Marathon without permission from Boston Athletic who claimed trademark infringement. The court said no. ISSUES, Confusion, Presumption of Confusion. Fair Use Societe Des Products Nestle v Casa Helvetia, 982 F.2d 633 (1st Cir 1992). Nestle sued to stop importation of their product from Venezuela claiming their were differences in the two products. The court of appeals agreed. ISSUES, Animating Principles of Trademarks Territoriality of Trademarks Equine Technology v Equitechnology, 1995, 1st District Court of Appeals. Equine sued Equitechnology for trademark infringement and won. Equitechnology was not too bright in this case. It was a loser from the beginning. Good example of what makes up confusingly similar marks. ISSUES, Categories of Trademarks Precious Moments v La Infantil, 971 F. Supp. 66 (D.P.R. 1997). Precious Moments sues to stop La Infantil from making and selling bedding from copyrighted, licensed fabric. Court ruled bedding items manufactured with lawfully acquired, authentic fabric with copyrighted design were not infringing derivative works, Court did require La Infantil to attach a notice with a disclaimer. Precious Moments lost because of the First Sale Doctrine. ISSUES Derivatives, Disclaimers Clorox v Proctor & Gamble, 228 F.3d 24 (1st Cir. 2000). Clorox claims Proctor & Gamble's advertising is false. Court of Appeals reversed lower court in favor of Clorox. Interesting for discussion by Court of trademark issues. ISSUES, False advertising, Literal falsity, Puffery Yankee Candle Co. v. Bridgewater Candle Co, 259 F.3d 25 (1st Cir. 2001). Yankee Candle sued Bridgewater over similar labels claiming copyright infringement. Issues, Copying, Ordinary observer test, Merger doctrine, Trade Dress, Secondary meaning Copyrightability Shelby Ford v Superperformance, 251 F. Supp. 2d 983 (D. Mass. 2002). Deals with disposing of some motions where Ford was claiming trademark infringement on the use of "Cobra". Looks like Superperformance came out the winner. Court was not happy with either side. ISSUES, Trade dress, Secondary meaning 2nd Circuit         Connecticut, New York, Vermont Kemp & Beatley v Hirsch, 34 F.2d 291 (E.D.N.Y. 1929), Hirsch directly copied copyrighted dress patterns sold by Kemp & Beatley. The court ruled the copyrights invalid because garments cannot be copyrighted. ISSUES, patterns not copyrightable Jack Adelman, Inc. v. Sonners & Gordon, Inc, 112 F.Supp. 187 (SD New York 1934). Jack Adelman had a copyright on the drawing of a woman's dress. Sonners & Gordon started manufacturing and selling dresses taken from the copyrighted drawing. Adelman sued claiming copyright infringement. Court ruled the copyright covered the drawing but not the dresses made from the drawing. ISSUES, Clothing not copyrightable Clothing not copyrightable #2 Clothing not copyrightable #3 Mary Muffet v. Budget Dresses, 30 F. Supp. 872 (SD New York 1939). This was a design letters patent suit in which infringement was alleged of letters patent No. 109,837, issued to Morris Sobelman, May 24, 1938, for an ornamental design for a dress. The design patent was held to be invalid by the court because there is "no inventive act in applying a well-known lace to a well-known cut of garment." Scarves By Vera, Inc. v. American Handbags, Inc, 188 F. Supp. 255 - US: Dist. Court, SD New York 1960. Vera markets a line of women's products and accessories. American Handbags began using her towels with her logos on them to make handbags. Vera sued. The court dismissed her claims but did require American Handbags to include a better disclaimer. ISSUES, Disclaimer Batlin Vs Snyder, 536 F.2d 486 (2d Cir. 1976). Widely quoted decision concerning what it takes for a work to qualify for a copyright. This case also set the standard for a derivative. ISSUES, Originality Abercrombie & Fitch v Hunting World, 537 F.2d 4 (2nd Cir 1976). Abercrombie & Fitch was claiming exclusive rights to use "Safari" in marketing hunting clothes. The court disagreed. ISSUES, Trademark categories, Generic Trademark, Descriptive Trademark American Footwear Corp. v. General Footwear Co. Ltd.,, 609 F.2d 655 C.A.N.Y., 1979. General Footwear and co-defendant Universal Studios claimed the trademark rights to the word "Bionic" based upon the TV show the Bionic Woman and the Six Million Dollar Man. The court rejected their arguments. ISSUES, Profiting, Secondary meaning, Unfair competition Home Box Office v Showtime, 832 F.2d 1311 (2d. Cir. 1987). Showtime was using HBO's name in advertising that the court found was trademark ingringement. Very good discussion of disclaimers ISSUES, Trademark infringement, Disclaimers Charles Of The Ritz Group Ltd v Quality King Distributors, Inc, 832 F.2d 1317 (2nd Cir, 1987). Charles of the Ritz makes the perfume "Opium". Quality King was marketing a perfume called "Omni". Omni smelled like Opium, the box looked like Opium, and Opium was referenced on the box. This case is often mis-qouted by corporate lawyers who claim disclaimers are ineffective. Also check out Charles of the Ritz Analysis that goes into detail about how corporate & trial lawyers lie about disclaimers. ISSUES, Polaroid, Disclaimers Whimsicality v Rubie's Costume Co, 891 F.2d 452 (2nd Cir 1989). Whimsicality had copyrights on its costumes and sued Rubie's alleging copyright infringement. The court declared the copyright registration by Whimsicality to be invalid and awarded attorney's fees for filing for a copyright in bad faith. ISSUES, Copyrightability of clothing, Copyright invalidation Soltex Polymer Corporation v. Fortex Industries, Inc., 832 F.2d 1325 (2d Cir. 1987). Soltex was using a name very close to Fortex. Use of disclaimers ordered. ISSUES, Polaroid, Disclaimers Dial-A-Mattress v Page, 880 F.2d 675 (2nd Cir 1991). Page began using a telephone number similar to the one used by Dial-A-Mattress. Court upheld ruling that a telephone number can be considered a trademark anf therefore protectible under trademark laws. Page lost. ISSUES, Generic Trademark Folio Impressions, Inc. v. Byer California, 937 F.2d 759 (2d Cir. 1991). Folio copyrighted a fabric design and claimed Byer copied it. The district court said no and the court of appeals upheld. ISSUES, Originality, Copyright Infringement, Ordinary observer, Copying Copyrightability of dress patterns Major League Baseball Players Assoc v Dad's Kid, 806 F.Supp. 458 (SD New York 1992). MLBPA sued to stop Dad's Kid from using genuine licensed basdeball cards to make 3-D baseball cards. Court denied motions by MLBPA citing no likelihood of success on the issues. ISSUES, First Sale Polymer Technology Corp. v. Mimran, 37 F.3d 74 (2nd Cir 1994). Polymer sued to stop Mimran from buying its promotional products and then reselling them. The court said it was not illegal. ISSUES, Quality control (trademark), Unauthorized distribution, Labeling John Paul Mitchell v Pete N Larry's, 862 F.Supp. 1020 (W.D.N.Y. 1994). John Paul Mitchell sues to stop Pete N Larry's et al from reselling John Paul Mitchell Cosmetics. John Paul Mitchell lost on all issues except the removal of batch codes from the merchandise. ISSUES, Geniune goods, Tortious interference, Fraud Car-Freshner v S.C. Johnson, 70 F.3d 267 (2nd Cir 1995). Car Freshener sues Johnson over the use of a pine tree image as a air freshener. Court upheld "Fair Use" by Johnson. ISSUES, Fair Use See also Car-Freshner Corporation v. S.C. Johnson & Son an analysis of the 1996 decision where the Second Court of Appeals held that descriptive use of a trademark is fair use. Woods Vs Bourne, 60 F. 3d 978 (2d Cir. 1995). Harry Woods wrote a song, "When the Red, Red, Robin Comes Bob, Bob, Bobbin' Along", and sold the copyright to Irving Berlin. Bourne acquired the rights some years later. Great discussion of what constitutes a derivative. ISSUES, Derivative Matthew Bender & Co v West Publishing, , 158 F.3d 693 (2nd Cir. 1998). Bender was using "star pagination" to show page numbers just like West Publishing in judicial opinions. Court held Bender was not infringing. ISSUES, Substantial similarity, Contributory Infringment My Web Grocer v. Hometown Info, , 375 F.3d 190 (2nd Cir. 2004). MyWeb sued for copyright infringement because Hometown had used its product descriptions on a new web site. ISSUES, non-protectible facts, product description, Scenes a faire Matrix Essentials v Quality King, , 522 F.Supp.2d 470 (ED NY2007). L'Orel (Matrix) sued to stop "diversion" of its products. The court ruled no infringement. ISSUES, Substantial similarity, Substantial similarity, Substantial similarity 3rd Circuit         Deleware, New jersey, Pennsylvania, Virgin Islands Burke & Van Heusen v Arrow Drug, 233 F.Supp. 881 ( E.D. PA 1964). Plaintiff, the holder of the copyrights to certain musical compositions, granted to Beecham Products, Inc., in exchange for agreed royalties, a restrictive license for the use of the compositions on long playing records which were to be used only as a premium in connection with the sale of a certain shampoo. Beecham sold the records with the shampoo to Arrow Drug, Inc., which resold the records separately from the shampoo. Plaintiff claimed that the sales by defendant infringed its copyrights. The court ruled that the plaintiff had lost all rights to control the product under copyright law. ISSUES, First sale doctrine, First sale doctrine Sebastian Intern., Inc. v. Consumer Contacts (PTY) Ltd.,, 847 F.2d 1093 (3d Cir. 1988). Sebastian entered into an oral contract with Consumer Contacts in which Consumer Contacts agreed to distribute Sebastian beauty products to professional hair styling salons in South Africa, but not elsewhere. A large shipment was sent back to the US by Consumer Contactsand sold without authorization from Sebastian. Sebastian sued for beach of contract and copyright infringement. Lower court granted an injunction but the court of appeals overturned the ruling using the first sale doctrine. ISSUES, First sale doctrine, First sale doctrine Step-Saver Data Sys., Inc. v. Wyse Tech.,, 939 F.2d 91 (3d Cir. 1991). Wyse Tech claims its software is licensed, not sold, and that the "user agreement" prohibits Step-Saver from seeking damages. Court rules software is "sold" under the UCC and that "user agreements" are improperly restrictive. ISSUES, Contract formation, UCC § 2-207, First sale doctrine Advent Syatems v Unysis Corp, 925 F.2d 670 (3rd Cir 1991). Court concludes software is a "good" under the Uniform Commercial Code. ISSUES, tortious interference, software is goods Matrix Essentials v. Cosmetic Gallery,, 870 F. Supp. 1237 (D.N.J. 1994). Matrix sued Cosmetic Gallery to stop them from reselling their products. Matrix claimed only salons were allowed to sell their products. The court disagreed. ISSUES, Existing contract, First Sale Doctrine (trademark), Intentional defacement (trademark) Iberia Foods v Rolando Romeo,, 150 F.3d 298 (3rd Cir 1998). Rol-Rom Foods purchases Mistolin products on the open market in Puerto Rico and sells them in New York and New Jersey at a substantial discount from Iberia's price. Iberia contended that by buying Mistolin in Puerto Rico and selling it in the continental United States, Rol-Rom had circumvented the quality control measures enforced by Iberia on all the Mistolin products it sold and sued for trademark infringement. The court of appeals rejected the argument because the quality controls measures appeared to be minimal and ruled for the defendant. ISSUES, gray goods, material difference, 3rdCircuitCOA/Abv/IberiaFoods_v_RolandoRomeo_A2.shtml IberiaFoods_v_RolandoRomeo_A.html Quality control 4th Circuit         Maryland, North Carlina, South Carolina, Virginia, West Virginia AOL v AT&T, 243 F3d 812 (4th Cir, 1999). AOL sues AT&T over the use of "You've Got Mail" and "Buddy List", both trademarked by AOL. Court rules, NO, they are generic and therefor not availabale for trademark protection. ISSUES, Generic Trademark, Secondary meaning Louis Vuitton Malletier v Haute Diggity Dog, No. 5:07-CV-493-D. (E.D. N Car W.D. 2008). Louis Vuitton did not like the dog chew toy called "Chewy Vuiton" made by Haute Diggity Dog. Lower court ruled chew toy was a parody. Court of appeals agreed. Very good discussion of what constitutes a parody and an informative discussion on dilution and tarnishment. ISSUES, Parody Custom Dynamics v Radiantz LED Lighting 535 F. Supp. 2d 542 (E.D. NCar W.D. 2008). Custom Dynamics and Radiantz LED Lighting are business partners that had problems, and problems, and problems. And they went to court over them. Custom Dynamics tried to claim copyrignt infringement over the use of its product pictures and text. Court denied the injunction saying the copyright claims were not strong. ISSUES, Copyrightability of product-description pictures, Copyrightability of product-description display 5th Circuit         Louisiana, Mississippi, Texas CM Paula v Logan, 355 F.Supp. 189 (ND TX 1973). Logan was buying cards sold by Paula and removing the images and tranferring those images onto cermaic tiles. Since Logan was using one card per tile, the court concluded there was no copying. However the court did require Logan to begin using a disclaimer. ISSUES First sale doctrine Disclaimers Boston Professional Hockey v Dallas Cap, 510 F.2d 1004 (5th Cir 1975). Dallas Cap was making and selling emblems of the hockey teams claiming that since the team logos were not copyrighted that selling the trademark was allowed under the Lanham Act. The court of appeals disagreed. ISSUES American Intl Pictures v Evan H Forman, 576 F.2d 661 (5th Cir, 1978). Seven major motion picture distributors sued Foreman claiming copyright infringement of 120 motion pictures. They alleged that Foreman violated their exclusive right to vend these films by selling and dealing in them through his business, 16 MM Filmland. Court of appeals agreed. ISSUES, First sale doctrine Zatarains, Inc. v. Oak Grove Smokehouse, 698 F.2d 786 (5th Cir, 1983). Zatarains sued to stop Oak Grove from using "FISH FRY" claiming their trademark "FISH FRI" had "secondary meaning". Court disagreed and also stated "Fair Use Doctrine" prevailed. Zatarains prevailed on some other issues. ISSUES, Generic Trademark, Descriptive Trademark, Secondary meaning, Fair use, Cancellation of Trademark Pizza Hut v Papa Johns,227 F.3d 489 (5th Cir 2000). Pizza Hut sued Papa Johns claiming false advertising under the Lanham Act for the use of "Better Ingredients, Better Pizza". Pizza Hut won a jury trial but lost on appeal when the Appeals Court ruled that as a matter of law, "puffery" was not actionable. ISSUES, Puffery, False advertising Westchester Media Co., L.P. v. PRL USA Holdings, Inc, 214 F.3d 658 (5th Cir. 2000). Ralph Lauren didn't like a sports magazine using "POLO" for its title. Court concluded disclaimers would be an effective remedy to infringement among others. ISSUES, Disclaimers John Paul Mitchell v Quality King, 106 F.Supp.2d 462 (5th Cir 2000). John Paul Mitchell sued to stop Quality King from selling diverted cosmetics. The court said "Sorry John Paul", not ingringrment or interference with a contract. ISSUES, exclusive distribution arrangements, diversion Galiano v Harrah's, 416 F.3d 411 (5th Cir 2005). Galiano designed uniforms for Harrah's Casinos. Court ruled clothing designs were not copyrightable. ISSUES, Copyrightability of clothing, Conceptual separability, Copyrightability of clothing designs Smith v Wal-Mart Stores/b>, 537 F.Supp.2d 1302 (ND GA 2008). Charles Smith really does not like Wal-Mart. He began an anti-Wal-Mart campaign which included selling materials that were very negative about Wal-Mart. Wal-Mart sued claiming trademark infringement. This decision goes into a lengthy discussion of surveys as evidence. Wal-Mart lost this round as the court ruled the items to be parodies. ISSUES, Parody, Tarnishment/parody, Dilution, For profit Board of Supervisors LSU v Smack Apparel, 550 F.3d 465 (5th Cir 2008). Smack Apparel was marketing t-shirts in the various school colors but the designs and wording on them made them infringing. ISSUES 6th Circuit         Kentucky, Michigan, Ohio, Tennesee Bath & Body Works v Luzier Personalized Cosmetics, 76 F.3d 743 (6th Cir. 1996). Bath and Body was ruled to be a generic term and not eligible fot trademark protection. Bath & Body Work was also claiming secondary meaning which was denied. ISSUES, Generic trademark Rock and Roll Hall of Fame and Museum v. Gentile Productions, 134 F.3d 749 (6th Cir, 1998). Photographer took a picture of the Rock And Roll Hall of Fame and put it on a poster with the name. The name and the building were trademarked. Hall of Fame sued. They had their own posters and didn't want competition. Court denied the Hall of Fame claims for trademark infringement claiming "Fair Use" in the use of the name and a picture of the building. ISSUES, Trademark definition McDonald's v Shop At Home, 82 F.Supp.2d 801 (MD TN 2000). Shop At Home bought and then sold some promotional toys that McDonald's only wanted sold through the fast food outlets. McDonald's claimed selling the toys without authorization was infringement. The district court ruled the first sale doctrine overruled the objections by McDonalds. ISSUES, First Sale Doctrine Trademarks ETW v Jireh Publishing 332 F.3d 915 (6th Cir 2003). Tiger Woods sued to stop an artist from using his likeness in a painting and then selling copies. ETW claimed protection under the Lanham Act for any and all images of Tiger Woods, which the Court deemed "an untenable claim". The painting was considered protected under the First Amendment. Tiger lost. ISSUES, Fair use, Trademark definition, Likeness not protectable, Likeness not protectable (Babe Ruth), Likeness not protectable (Elvis Presley), First Amendment, False designation of origin, Right of publicity 7th Circuit         Illinois, Indiana, Wisconsin Jorie Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1983). Gracen won a contest for the best painting of Judy Garland as Dorothy in the "Wizard of OZ". She received a copyright registration on the painting and sued the Bradford Exchange for using the likeness on some licensed plates. Court ruled her painting was a derivative and that her painting lacked originality and declared her copyright registration was invalid. ISSUES, Copyrightability, Derivative, Implied license, Originality ProCD v. Matthew Zeidenberg, 86 F.3d 1447 (7th Cir, 1996). Matthew Zeidenberg bought a consumer package of SelectPhone (trademark) in 1994 from a retail outlet in Madison, Wisconsin, but decided to ignore the shrinkwrap license. ProCD sued, citing the license agreemnt. The District Court rejected the license argument and ruled for Zeidenberg. Seventh Court of Appeals reversed using faulty logic. This was a bad decision. ISSUES See also Contract Formation and the Shrink Wrap License: A Case Comment on ProCD, Inc. v. Zeidenberg, A lengthy paper by Robert J. Morrill which talks about ProCD and shrink-wrap licenses and why the court got it wrong in this case. And ProCD Inc. v. Zeidenberg concerns "shrinkwrap licensing agreements". Excerpted article. Lee v. Deck the Walls, Inc, 925 F.Supp. 576 (N.D.Ill.1996). Deck the Walls buys cards and has A.R.T. Co mount them on tile. Lee sues claiming the tiles are copyright infringement because they are derivatives. Court rejects Mirage and Lee's claims while stating derivatives must show originality and be copyrightable. Rules Deck the Walls is protected by the first sale doctrine. ISSUES, derivative work defined, on Munoz, Derivative work, on 9th Circuit, Derivative copyrightability, First sale doctrine Ayres v City of Chicago, 125 F.3d 1010 (7th Cir 1997). Chicago set aside a large part of downtown off-limits to peddlers. Ayers was selling t-shirts with a political message and was prohibited from selling them. The court said that was a no-no. ISSUES, First Amendment LEE v A.R.T. Company, 125 F.3d 580 (7th Cir. 1997). A.R.T. Co buys cards and mounts them on tile. Lee sues claiming the tiles are copyright infringement because they are derivatives. Court rejects Mirage and Lee's claims while stating derivatives must show originality and be copyrightable. ISSUES, First sale doctrine, Derivative, Derivative copyrightability Ty v. Publications International, 292 F.3d 512 (7th Cir 2002). Publications International publishes several collectors guides for Beanie Babies. Ty claims they cannot without a license. Real good discussion of fair use. Court of Appeals determined fair use. ISSUES, Fair use, Copying, Parody, Derivative, Profiting Ty v. Ruth Perryman, 306 F.3d 509 (7th Cir. 2002) . Ty doesn't like Perryman selling Beanie Babies using the name "Beanies". Court of Appeals vacated lower court injunction and remanded mostly in favor of Perryman. Good trademark dilution case. ISSUES, Trademark definition, Trademark dilution, Generic trademarks See also Beanie Baby Trademark Wars article by Eric J. Sinrod for USA Today, October 10, 2002 and Beanie Baby Trademark Wars 2 article by Phillip Nizer about this 2002 case. 8th Circuit         Arkansas, Iowa, Minnestota, Missouri, Nebraska, North Dakota, South Dakota Ellison Equioment v AccuCut Systems 769 F. Supp. 1090 - Dist. Court, D. Nebraska 1991 Ellison claimed trademark and copyright protection for its paper cutouts. The federal court said no. . ISSUES, copyrightablility Graham Webb Intl v Emporium Drug Mart 916 F.Supp. 909 (E.D. Ark 1995) Graham Webb sells over-priced cosmetics through salons only. Emporium Drug Mart obtained some diverted product and was selling it cheaper. Webb sued. He lost on all counts. . ISSUES, material difference, professional consultation, disclaimers, Tortious interference Action Tapes vs Kelly Mattson 462 F.3d. 1010 (8th. Cir. 2006) District Judge dismissed lawsuit by Action Tapes where Action claimed Mattson was infringing on copyright. Judge found embroidery CDs were not computer programs but only sets of computer instructions. Court of Appeals upheld summary judgment but on the grounds that Action Tapes had not shown registration of alleged computer program and therefore could not file a lawsuit alleging infringemnt. ISSUES, First sale doctrine See also Court: Sewing Patterns are Data, Not Code from Wired.com, August 31, 2006. 9th Circuit         Alaska, Arizona, California, Guam, Hawaii, Nevada, Oregon, Washington Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F. 2d 738 (9th Cir 1971). Rosenthal charged Kalpakian with infringing his copyright registration of a pin in the shape of a bee formed of gold encrusted with jewels. The court of appeals rejected Rosenthal's understanding that his copyright would effectively prevent others from engaging in the business of manufacturing and selling jeweled bees. The court went into a lengthly discussion of copyright "ideas" and copyright "expression", ideas not being copyrightable. ISSUES, Patents, Copyright Registration, Copyright Idea & Expression, Copyright Monopoly United States vs Wise, 550 F.2d 1180 (9th Cir 1977). Criminal copyright case involving movies films. Sale versus license addressed. Job's Daughters, Inc. v. Lindeberg and Co, 633 F.2d 912 (9th Cir 1980). Lindberg was making and selling jewelry exactly the same as Job's Daughters. Court ruled it was not trademark infringement because the jewelry was not being used as a trademark. ISSUES, Functional features, Trademark definition NEC Electronics v Cal Circuit, 810 F.2d 1506 (9th Cir. 1987). Cal Circuit was buying NEC computer chips overseas and reselling them in the US. NEC USA sued for trademark infringement. The court of appeals stated that since the computer chips were the same as the ones sold in the US by NEC there was no infringement. ISSUES Mirage Editions, Inc. v. Albuquerque A.R.T. Co, 856 F.2d 1341 (9th Cir. 1988), cert. denied, 489 U.S. 1018 (1989). A very flawed decision from the most overturned circuit. A.R.T. was cuting cards from a book and mounting them on tiles. Mirage sued claiming the tiles are copyright infringement because they are derivatives. 9th Court agreed but no other circuit does. Mirage has been disclaimed by most other circuits and by many legal scholars. ISSUES, Bad case law New Kids v News America, 971 F.2d 302 (9th Cir 1992). New Kids On The Block sued two newspapers because the papers used their names in unauthorized promotions. Often quoted decision involving The Fair Use Doctrine. Court ruled against New Kids. ISSUES, Trademark definition, Fair use, Nominative fair use, Profit See also Trademark Infringement -Perceived meaning of the mark, by Sam Biers for 4lawschool.com. Discusses New Kids On The Block ruling by the 9th Circuit. December 12, 1997 Sebastian v Longs Drug Stores, 53 F.3d 1073 (9th Cir 1994). Sebastian sued to stop Longs from reselling cosmetics without authorization. 9th Circuit Court of Appeals slapped Sabastian down on the first sale doctrine and accused Sebastian of Trademark Misuse. ISSUES, First sale doctrine, Trademark misuse Fonovisa Inc. v. Cherry Auction, 76 F.3d 259 (9th Cir. 1996). The Ninth Circuit held that flea market owners may be liable for vicarious and contributory infringement. ISSUES Contributory copyright infringement, Vicarious liability, Contributory infringement, Contributory Trademark Infringement CD Solutions v Tooker, 15 F. Supp. 2d 986 (D. Or. 1998). Tooker and CDS claims exclusive rights to the use of "CDs". Court ruled in favor of CD Solutions saying it was generic, effectively voiding the trademark held by CDS. ISSUES, Likelihood of confusion, Generic trademark Tiffany Design v Reno-Tahoe Specialty, 55 F. Supp. 2d 1113 (D.Nev. 1999). Two companies agrue over who owns the rights to a photograph of the Las vegas Strip, taken 1998. In a confusing ruling, the Court ruled that Reno-Taho had violated Tiffany's "exclusive right to reproduce copyrighted works under 17 U.S.C. § 106(1)" but conversly ruled that Reno-Taho had NOT violated Tiffany's. "exclusive rights to create derivative works and to distribute its copyrighted work under 17 U.S.C. § 106(2) -(3)." HUH? Well, that's the 9th Circuit for you. Remember, Fantasyland is there. ISSUES Protected expression Ets-Hokin v Skyy Spirits, 225 F.3d 1068 (9th Cir. 2000). Ets-Hoskins took several commercial photgraphs of a vodka bottle. He tried to claim the photographs of the same bottle by other photographers violated his copyrights. The court of appeals said his pictures were copyrightable but the bottle of vodka was a useful article not subject to copyright protection. How many different ways are there to take a picture of a vodka bottle? ISSUES, Copyrightability, Copyrightability of a derivative, Originality, Preexisting work, Derivative Softman Products v Adobe Systems, 171 F. Supp. 2d 1075 (C.D. Cal. 2001). Court states, under the first sale doctrine, resale by the first purchaser of the original article under the producer's trademark is generally neither trademark infringement nor unfair competition." It also stated, the "sale of genuine trademarked product by seller unauthorized to sell not a violation of Lanham Act". ISSUES, First sale doctrine, EULA, Licensing, Software Sold, Shrinkwrap licenses, Transfer of title, Shrinkwrap licenses 2, Material difference Mattel vs MCA Records, 2002, 296 F.3d 894 (9th Cir. 2002). Mattel didn't like the song "Barbie Girl" and sued. Court found no trademark infringement. ISSUES, First Amendment, Parody Timothy Vernor v Autodesk C07-1189RAJ, (Sept 2009 9th Cir W. Wash) Order by District Judge stating that Autodesk's software was SOLD NOT LICENSED and that the Plaintiff, Timothy Vernor was entitled to use the First Sale Doctrine as a defense to alleged copyright infringement. This ruling is being appealed. See also Court smacks Autodesk, affirms right to sell used software by Timothy B. Lee, published: May 23, 2008 for ars Technia UMG Recordings vs Troy Augusto 558 F. Supp. 2d 1055 - Dist. Court, CD. California, 2008. Order by District Judge dismissing lawsuit by UMG which alleged Augusto was illegally selling promotional CDs. Judge found unsolicited CDs sent to music industry recipients were gifts and the attached license was invalid. Accordingly, under the first sale doctrine, Augusto was free to re-sell these CDs regardless of restrictions printed upon them. ISSUES, First sale doctrine, Ownership, License, Gift under federal law, Wording not a license See also Judge Shoots Down Universal's Bogus Infringement Allegations article from the EFF about Troy Augusto and his fight against Universal Music Group (UMG). The ruling affirmmed an eBay seller's right to resell promotional CDs that he buys from secondhand stores. 10th Circuit         Colorado, Kansas, Montana, New Mexico, Oklahoma, Wyoming Jordache Vs Hogg Wyld, 828 F.2d 1482, 1486 (10th Cir. 1987). Jordache was claiming trademark infringement over the use of "Lardashe" on jeans. Court ruled use of trademark was fair use as a parody under trademark law. ISSUES, Parody, Actual confusion, Degree of care Cardtoons v. Major League Baseball Players Assn, 95 F.3d 959 (10. th. Cir. 1996). Court ruled using the likeness of players on parody baseball cards was not infringing. A real good discussion of the requirements for seeking a declaratory judgment in federal court. ISSUES, Declaratory judgment, Right of publicity, First Amendment, Profit, Parody Country Kids v. Sheen, 77 F.3d 1280 (10th Cir 1996). Maker of dolls sued a former employee claiming she copyed her doll designs. Court of Appeals reversed preliminary injunction, saying that most aspects of the dolls were not copyrightable. ISSUES, Copying, Abstraction filtration comparison, Copyrightability, Ordinary observer Creative Gifts v. UFO, 235 F.3d 540 (10th Cir. 2000). Toy maker Creative Gifts sued claiming trademark infringement. UFO countered claiming the name "Levitron" was generic. Court found for Plaintiff. ISSUES, Generic trademarks, Acquiescence, Naked license Sally Beauty Company v. Beautyco, 304 F.3d 964 (10th Cir 2001). Beautyco's use of "generic version of" on its GENERIX products caused Sally Beauty to sue. Sally Beauty lost, we think. ISSUES, Degree of care, Trade dress, Distinctiveness, Secondary meaning Close to My Heart, Inc. v. Enthusiast Media LLC,, 508 F. Supp. 2d 963 - Dist. Court, D. Utah, Central Div. 2007. Close to My Heart claimed Enthusiast Media stole proprietary scrapbooking ideas and patterns. The court found otherwise. ISSUES, abstraction-filtration-comparison Dudnikov v. Chalk & Vermilion Fine Arts Inc.,, 514 F.3d 1063 (10th Cir. 2008). Sevenarts, owner to the rights of Erte a designer and artist, objected to fabric depicting Betty Boop wearing an Erte gown and ordered teBay to terminate the auctions. When sued, Defendants filed to dismiss stating a lack of jurisdiction. Appeals Court found for Plaintiffs. ISSUES, Jurisdiction, NOCI 11th Circuit         Alabama, Florida, Georgia Allison v Vintage Sports, 136 F.3d 1443 (11 Cir. 1998) Vintage Sports bought trading cards and mounted them on plaques to sell. Elisa Allison, the widow of race car driver Clifford Allison, sued claiming right of publicity. District court held the first sale doctrine superceded any rights of publicity. Court of appeals affirmed. ISSUES, first sale doctrine Leigh v Warner Brothers, 212 F.3d 1210 (11 Cir. 2000). Leigh took a picture of a statue that was used on a book cover. Warner Brothers used a similar picture in a movie. Leigh sued claiming copyright infringement. The Court upheld the doctrine that "objects in the public domain or as they occur in nature is not protected by copyright" and ruled in favor of Warner Brothers. ISSUES, Substantial similarity, Objects in the public domain, Protected elements Davidoff v PLD International, 263 F.3d 1297 (11th Cir. 2001). PLD was acquiting product manufacutured by Davidoff and reselling it after removing the etched product codes from the bottles. The court found that the removal of the product codes disfigured the bottles to the point that a consumber would likely conclude there had been tampering. That created a material difference and PLD was enjoinded from reselling the prodicts. ISSUES, Trademark infringement, Material Difference Federal Circuit Nitro Leisure v Acushnet, 341 F.3d 1356 (Fed Cir 2003). Acushnet makes golf balls. Nitro acquires used golf balls, repairs and refurbishes them, and then resells them with a disclaimer on the box. During refurbishing, Nitro sometimes reapplied the Acushnet tradmark to the golf balls. Court of appeals said used goods have a lower consumer expectation and affirmed that there was no infringement. ISSUES, Used products, material differences Supreme Court Baker vs Selden, 101 US 99 (1879). Considered the primary Supreme Court decision on the "idea-expression dichotomy" concerning copyrights. Regardless that this decision is some 130 years old, it is still law of the land and taught in law schools. ISSUES, patterns not copyrightable items made using copyrighted information are not covered by the copyright Bobbs-Merril vs Straus, 210 U.S. 339 (1908). Limited the rights of copyright holders to those allowed by statute only. ISSUES, First sale doctrine F. W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228 (1952), awarding statutory damages in copyright infringement even when they are larger than actual damage. In this case, F. W. Woolworth Co did not know it was infringing and felt the actual damages of $899.16 was more reasonable than the statutory damages of $5,000.00. ISSUES Champion Spark Plugs v Sanders, 331 U.S. 125 (1947), Court ruled used products do not have the same high level of likelihood of infringement. ISSUES, trademarks on used goods, used goods Calder v. Jones, 465 U.S. 783 (1984), a landmark jurisdiction case concerning Shirley Jones and the National Enquirer, et al. Court ruled that actions directed at a resident of a state puts jurisdiction in that state. ISSUES Campbell v. Acuff Rose Music, 510 U.S. 569 (1994). Acuff Rose Music didn't like the paropdy of "Pretty Woman" by 2LiveCrew and sued. Supreme Court ruled in favor of 2LiveCrew saying "Fair Use". ISSUES, For profit use, Potential market Fogerty v. Fantasy, 1994. Discusses the grounds for awarding attorney fees in copyright cases. ISSUES Quality King v Lanza, 98 F.3d 1109 (1998), a landmark case citing the First Sale Doctrine that was reversed by the Supreme Court.. See also L'anza Research International Inc. v. Quality King Distributors is discussed in this edited article. The only editing was to exclude other cases. The wording was not altered. This ruling was appealed to the Supreme Court which reversed. Moseley et al., dba Victor's Little Secret v. Victoria's Secret Catalogue, 259 F.3d 464 (2003). Victoria's Secret objected to Victor's Little Secret but the Supreme Court said, "Sorry, Charlie". ISSUES Dastar Corp vs Twentieth Century Fox, 537 U.S. 1099 (2003). .Twentieth Century Fox produced a TV series based upon General Eiseenhower's book, "Crusade In Europe" and failed to renew the copyright before it lapsed. Twentieth Century Fox reacquired the rights to the book. Dastar bought old copies of the TV series and released them as its own. Fox claimed trademark infringement. The Court reversed the Ninth Circuit's decisions saying the TV show was public domain and Fox could not claim infringement. Good discussion of "origin" of products. ISSUES

 

Massachusetts Clairol, Inc. v. Cody's Cosmetics, 353 Mass. 385 (1967). Clairol sought to enjoin Cody's Cosmetics from selling at retail to the general public Clairol's products designated "Professional Use Only." The court rejected this attempt except to require Cody's to use a disclaimer warning consumers that the bottles were originally part of a six-pack that was broken open. ISSUES Texas John Paul Mitchell v Randalls Food Markets, 17 S.W.3d 721 (TX 2000). John Paul Mitchell sought to enjoin Randalls Food Markets from selling at retail to the general public John Paul Mitchell's products designated "Professional Use Only." A jury found for the plaintiff however the judge set aside the verdict as a matter of law. The Texas Court of Appeals upheld the judge on all counts. ISSUES, Diversion, Tortious interference, Unfair competition, Material difference, Professional consultation, First Sale Doctrine General Articles | Cease and Desist Letters | Federal Court Cases | FAQs & Whines | Glossary | Hall Of Shame | Contributions Corporate Lawyers Cartoons | Code Of Ethics | Courtroom Remarks | Definition Of A Lie | Jokes | Lawyers | Lying | Who Have Lied eBay - Land The Game™ Definitions Trademark Definitions Blurring   |   Confusion   |   Damages   |   Dilution   |   History   |   Initial Interest Confusion   |   Likelihood Of Confusion   |   Material Difference Standard Parallel Imports   |   Post-sale Confusion   |   Puffery   |   Secondary Meaning   |   Subsequent Confusion   |   Trademark Abuse Unauthorized Use   |   Unfair Competition   |   What is a Trademark? Copyright Definitions Angel Policies   |   Contributory Infringement   |   Copyrightability   |   Copyright Extortion   |   Copyright Misuse Doctrine Derivative   |   The Digital Millennium Copyright Act   |   EULA   |   Fair Use   |   First Sale Doctrine   |   Product Description Registration   |   Registration Denied   |   What is a Copyright?   |   What is not Copyrightable? Other Issues Embroidery Designs   |   FAQs & Whines   |   Image and Text Theft   |   Licensed Fabric   |   Licensing & Licenses   |   Patterns Patterns Index   |   Profit   |   Quilting   |   Selvage   |   Stanford School of Law Case Outline Tabberone Disclaimer   |   Trademark Extortion   |   Urban Myths   |   What To Do If You Are Veroed Federal Court Cases Alphabetically | by Federal Circuit | by Subject | by Court Quotations Federal Statutes Copyright Act 17 U.S.C. 5 | Digital Millenium Copyright Act 17 U.S.C. 12 | Lanham Act 15 U.S.C. 22 VeRO (Verified Right's Owner Program) VeRO Commandments | VeRO-Verified Rights Owners Program | Counter Notice Letter Counter Notice (pre-2003) | Counter Notice present | On-Line Survey from 2004 | Articles about VeRO | What To Do If You Are Veroed Original material by Karen Dudnikov & Michael Meadors is © 1999-2019 A Cup Of Joe For A Joe by Green Beans Coffee Company Karen and Mike, also known to you as Tabberone, have been actively participating in various troop support programs for a number of years. An important one we have discovered and supported is one run by the Green Beans Coffee Company of Larkspur, California. The Green Beans Coffee Company runs coffee houses in Iraq and Afghanistan, the Middle East and at other US military bases around the world. Your donations are converted into email chits that are randomly given to military personal who are based near these coffee houses. You are then sent an email by Green Beans Coffee telling at what location your donation(s) was distributed. The military recipient of your donation is also given the opportunity to email you a thank you with a message, which many of them do. Modern military deployment has changed very much since WWII, Korea and Vietnam. Back then there was no internet or cell phones. A soldier very rarely could call home or even go home on leave. But modern deployment does not alter the dangers they face. Green Beans Coffee is one of the little pleasures they can enjoy. Any donation makes a service man or service woman smile. We contribute every month. More information is available at https://www.greenbeanscoffee.com We rarely link to other sites. It is a really good cause.