Justia Antitrust & Trade Regulation Opinion Summaries

Articles Posted in US Court of Appeals for the Tenth Circuit
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After years of litigation, Plaintiff-Appellant Derma Pen, LLC (“Derma Pen”) was granted a permanent injunction against Stene Marshall and three related corporations that he had formed. Shortly thereafter, Derma Pen moved for a contempt order against Marshall, alleging that he had violated the injunction. Derma Pen also sought a contempt order against Marshall’s brother and sister- in-law, Joel and Sasha Marshall, and DP Derm, LLC, a corporation Joel and Sasha owned (collectively, the “Related Parties”). Movant-Appellant Derma Pen IP Holdings LLC (“DPIPH”), Derma Pen’s successor in interest, joined Derma Pen’s motion shortly before the contempt hearing. In its motion, Derma Pen asserted that the Related Parties had acted in concert with Marshall to violate the injunction. The Related Parties prevailed in the contempt proceeding and subsequently moved for attorney’s fees under the Lanham Act, 15 U.S.C. 1117(a). The court granted the motion for fees, and Derma Pen and DPIPH appealed that award. The Tenth Circuit found that in its award of attorney’s fees to the Related Parties, the trial court relied upon a statutory provision in the Patent Act as interpreted by the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). The issue presented for the Tenth Circuit’s review was whether the term “exceptional case” in the Patent Act differed in meaning from the same term used in the Lanham Act to a degree that required reversal. The Court concluded the exceptional case standard in the Lanham Act paralleled the standard in the Patent Act and affirmed. View "Derma Pen, LLC v. 4EverYoung Limited" on Justia Law

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Plaintiffs Erik Underwood and My24HourNews.Com, Inc. owned two putative service marks: “E.R.I.C.A.” and “my24erica.com.” Underwood claimed to have used these marks in his business, which offered internet-based search engine and personal assistant services. Bank of America Corporation (“BofA”) owned a registered federal trademark for a mobile banking application known as “ERICA.” Underwood sued BofA for infringing his marks. BofA counterclaimed to cancel Underwood’s Georgia registration of his E.R.I.C.A. mark. The district court granted BofA’s motions for summary judgment on its cancellation counterclaim and on Underwood’s infringement claims. After review, the Tenth Circuit affirmed in part and reversed in part. On BofA’s cancellation counterclaim, the Court affirmed summary judgment against Underwood. On Underwood’s infringement claims, the Court: (1) vacated summary judgment for BofA on the E.R.I.C.A. mark and remanded for the district court to apply the correct actual use standard; and (2) affirmed summary judgment for BofA on the my24erica.com mark. View "Underwood v. Bank of America Corporation" on Justia Law

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Since 2007, EC Design, LLC, sold its popular personal organizer, the LifePlanner. In 2015, Craft Smith, Inc., wanting to enter the personal-organizer market, reached out to EC Design about a possible collaboration. EC Design and Craft Smith couldn't agree to a collaboration. Craft Smith, with input from Michaels Stores, Inc., designed and developed a personal organizer to sell in Michaels stores, leading to this action in Utah federal district court. EC Design claims the Craft Smith and Michaels product infringed on the LifePlanner’s registered compilation copyright and unregistered trade dress. The district court disagreed, granting summary judgment in favor of Craft Smith and Michaels (collectively, the Appellees) on both issues. On the copyright issue, the district court concluded that EC Design did not own a valid copyright in its asserted LifePlanner compilation. On trade dress, the district court held that EC Design had failed to create a genuine issue of material fact over whether the LifePlanner’s trade dress had acquired secondary meaning. Though the Tenth Circuit disagreed with how the district court framed the copyright issue, the Tenth Circuit affirmed because no reasonable juror could conclude that the allegedly infringing aspects of Appellees’ organizer were substantially similar to the protected expression in the LifePlanner compilation. With respect to the trade dress issue, the Tenth Circuit agreed with the district court: EC Design had failed to create a genuine issue of material fact over whether the LifePlanner’s trade dress had acquired secondary meaning. Summary judgment as to both claims was affirmed. View "Craft Smith v. EC Design" on Justia Law

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Plaintiff, Steve Strauss, brought claims against Defendant, Angie’s List, Inc., alleging violations of the Lanham Act. Strauss owned a tree trimming/removal business called Classic Tree Care (“Classic”). Defendant Angie’s List was an internet-based consumer ratings forum on which fee-paying members could view and share reviews of local businesses. According to Strauss, the membership agreement between Angie’s List and its members lead members to believe that businesses were ranked by Angie’s List according to unedited consumer commentaries and endorsements when, in reality, the order in which businesses were ranked was actually based on the amount of advertising the business bought from Angie’s List. He alleged businesses were told they will be ranked more favorably on the website if they paid advertising and referral fees to Angie’s List. According to Strauss, from 2005 to 2016 he paid $200,000 in advertising services fees and coupon retention percentages to Angie’s List “in an effort to appear higher” in search results. The business relationship between Strauss and Angie’s List, however, began to sour in 2013. Strauss alleged he failed to appear in search results for a three-month period and then was “buried” in search-result listings even though he had numerous favorable reviews and a high rating from consumers. In September 2017, Strauss filed a putative class action lawsuit against Angie’s List, raising allegations that Angie’s List engaged in false advertising in violation of section 45(a) of the Lanham Act, as well as the Kansas Consumer Protection Act (KCPA). Strauss appealed when the district court dismissed his complaint on the basis that it failed to identify any statements made by Angie’s List that qualified as commercial advertising or promotion within the meaning of the Lanham Act’s false advertising provision. Strauss contended the district court erred by analyzing his claims under the test adopted by the Tenth Circuit in Proctor & Gamble Co. v. Haugen, 222 F.3d 1262 (10th Cir. 2000) (adopting a four-part test for determining what constitutes commercial advertising or promotion). Finding no reversible error, however, the Tenth Circuit affirmed dismissal of Strauss’ case. View "Strauss v. Angie's List" on Justia Law

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Plaintiffs and counterclaim-defendants Mrs. Fields Famous Brands, LLC (Famous Brands) and Mrs. Fields Franchising, LLC (Fields Franchising) appealed a district court order granting a preliminary injunction in favor of defendant and counterclaim-plaintiff MFGPC Inc. (MFGPC). The sole member of Famous Brands is Mrs. Fields Original Cookies, Inc. (MFOC). MFOC entered into a Trademark License Agreement (License Agreement) with LHF, Inc. (LHF), an affiliate of MFGPC. In 2003, LHF assigned all rights under the License Agreement to MFGPC, and MFGPC agreed to be bound by and perform in accordance with the License Agreement. The License Agreement granted MFGPC a license to develop, manufacture, package, distribute and sell prepackaged popcorn products bearing the “Mrs. Fields” trademark through all areas of general retail distribution. A dispute arose after Fields Franchising allowed MFGPC to be late with a royalty payment because of a fire that destroyed some of MFGPC’s operations. The franchisor sought to terminate the licensing agreement and collect the royalties owed. Fields Franchising filed suit against MFGPC. In August 2018, the district court entered partial summary judgment in favor of MFGPC on its counterclaim for breach of a trademark license agreement that afforded MFGPC the exclusive use of the “Mrs. Fields” trademark on popcorn products. The district court’s summary judgment order left only the question of remedy to be decided at trial. MFGPC then moved for a preliminary injunction, arguing that there was a substantial likelihood that it would prevail at trial on the remedy of specific performance. After conducting a hearing, the district court granted MFGPC’s motion and ordered Fields Franchising to terminate any licenses it had entered into with other companies for the use of the Mrs. Fields trademark on popcorn products, and to instead comply with the terms of the licensing agreement it had previously entered into with MFGPC. Famous Brands and Fields Franchising argued in this appeal that the district court erred in a number of respects in granting MFGPC’s motion for preliminary injunction. The Tenth Circuit agreed with appellants, and consequently reversed the district court’s grant of a preliminary injunction in favor of MFGPC. View "Mrs. Fields Famous Brands v. MFGPC" on Justia Law

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Plaintiff-Appellee C5 Medical Werks sued Defendant-Appellant CeramTec, a German company that produces ceramics and ceramic components for medical prostheses, in Colorado for cancellation of CeramTec’s trademarks and a declaratory judgment of non-infringement. CeramTec moved to dismiss for lack of personal jurisdiction. The district court denied CeramTec’s motion and, after a bench trial, found in favor of C5. CeramTec appealed both the district court’s finding of personal jurisdiction and its determination on the merits. After review, the Tenth Circuit concluded the district court did not have personal jurisdiction over CeramTec: CeramTec’s attendance at various tradeshows was fortuitous and, as such, was insufficient to show purposeful availment of the forum state, Colorado. Further, to the extent CeramTec engaged in enforcement activity, it did so outside of Colorado. Accordingly, the Court reversed the district court’s denial of CeramTec’s motion to dismiss for lack of personal jurisdiction and remand with instructions that the case be dismissed. View "C5 Medical Werks v. Ceramtec GMBH" on Justia Law

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Affliction Holdings, LLC (“Affliction”) sued Utah Vap or Smoke, LLC (“Utah Vap”) alleging trademark infringement. The district court granted Utah Vap’s motion for summary judgment, holding there was no likelihood of confusion between the parties’ marks. The Tenth Circuit concluded after review of the marks that Utah Vap did not meet its burden of showing that "no reasonable juror could find [a] likelihood of confusion." Because a genuine issue of material fact exists as to the likelihood of initial interest and post-sale confusion between the marks, the Court reversed the district court’s grant of summary judgment. View "Affliction Holdings v. Utah Vap Or Smoke" on Justia Law

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Five Peruvian shepherds who worked in the Western United States pursuant to H-2A agricultural visas brought antitrust claims, on behalf of themselves and similarly situated classes of shepherds, against several sheep ranchers (the “Rancher Defendants”), two associations (the “Association Defendants”), and Dennis Richins (referred to collectively as the “Defendants”). The Shepherds alleged the Defendants “conspired and agreed to fix wages offered and paid to shepherds at the minimum DOL wage floor.” The Shepherds also brought class action RICO claims against Richins and the Association Defendants. The RICO claims focused on allegedly false assurances made by the Association Defendants to the federal government that H-2A shepherds were being properly reimbursed for various expenses. The district court dismissed as to both claims, finding the complaint did not plausibly allege an agreement to fix wages, and did not allege the existence of enterprises distinct from the persons alleged to have engaged in those enterprises. The trial court denied the Shepherds' request to amend their complaint. On appeal, the Shepherds argued there were valid antitrust and RICO claims, and that the district court abused its discretion in denying their motion to amend their complaint. The Tenth Circuit concluded the district court erred in dismissing the RICO claim naming Richins as a defendant. But in all other regards, the district court was affirmed. View "Llacua v. Western Range Association" on Justia Law

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Plaintiff-Appellant DTC Energy Group, Inc., sued two of its former employees, Adam Hirschfeld and Joseph Galban, as well as one of its industry competitors, Ally Consulting, LLC, for using DTC’s trade secrets to divert business from DTC to Ally. DTC moved for a preliminary injunction based on its claims for breach of contract, breach of the duty of loyalty, misappropriation of trade secrets, and unfair competition. The district court denied the motion, finding DTC had shown a probability of irreparable harm from Hirschfeld’s ongoing solicitation of DTC clients, but that DTC could not show the ongoing solicitation violated Hirschfeld’s employment agreement. After review, the Tenth Circuit determined the district court did not abuse its discretion when denying DTC's motion for a preliminary injunction, and affirmed. View "DTC Energy Group v. Hirschfeld" on Justia Law

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Xlear, Inc. and Focus Nutrition, LLC were both in the business of selling sweeteners that used the sugar alcohol xylitol. Xlear filed a complaint raising a trade dress infringement claim under the Lanham Act, a claim under the Utah Truth in Advertising Act (UTIAA), and a claim under the common law for unfair competition. The claims all alleged that Focus Nutrition copied the packaging Xlear used for one of its sweetener products. Focus Nutrition moved to dismiss Xlear’s Lanham Act claim. At a hearing on Focus Nutrition’s motion to dismiss, the district court judge made several comments questioning the validity of Xlear’s Lanham Act claim but, ultimately, denied the motion. Following the hearing, the parties, pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), stipulated to the dismissal of all claims with prejudice. Under the stipulation, the parties reserved the right to seek attorneys’ fees and Focus Nutrition exercised its right by filing a motion under Federal Rule of Civil Procedure 54 to recover its fees under the Lanham Act and the UTIAA. The district court concluded that Focus Nutrition was a prevailing party under both the Lanham Act and the UTIAA, and that Focus Nutrition was entitled to all of its requested fees. On appeal, Xlear raised five challenges to the district court’s order. The Tenth Circuit Court of Appeals reversed the district court’s award of attorneys’ fees under the Lanham Act because Focus Nutrition was not a prevailing party under federal law. As to the UTIAA, the Court vacated the district court’s award of attorneys’ fees and remanded for further proceedings to permit the district court to analyze the factors governing prevailing party status under Utah law and, if the court concluded Focus Nutrition was a prevailing party under the UTIAA, to determine what portion of the requested fees Focus Nutrition incurred in defense of the UTIAA claim and the reasonableness of the requested fees. View "Xlear v. Focus Nutrition" on Justia Law