Justia Civil Procedure Opinion Summaries

Hana Financial and Hana Bank both provide financial services to individuals in the U.S. When Hana Financial sued Hana Bank for trademark infringement, Hana Bank invoked the tacking doctrine, under which lower courts have provided that a trademark user may make certain modifications to its mark over time while, in limited circumstances, retaining its priority position. The district court adopted in substantial part the jury instruction on tacking proposed by Hana Bank. The jury returned a verdict in Hana Bank’s favor. Affirming, the Ninth Circuit explained that the tacking inquiry was an exceptionally limited and highly fact-sensitive matter reserved for juries, not judges. A unanimous Supreme Court affirmed. Whether two trademarks may be tacked for purposes of determining priority is a jury question. Lower courts have held that two marks may be tacked when they are considered to be “legal equivalents,” i.e., they “create the same, continuing commercial impression,” which “must be viewed through the eyes of a consumer.” When the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decision-maker that ought to provide the fact-intensive answer. The “legal equivalents” test may involve a legal standard, but such mixed questions of law and fact have typically been resolved by juries. Any concern that a jury may improperly apply the relevant legal standard can be remedied by crafting careful jury instructions. View "Hana Financial, Inc. v. Hana Bank" on Justia Law

Appellant filed suit against the Republic of Cuba and others in Florida state court, alleging that appellees tortured appellant and that appellant continues to suffer the consequences of the torture. Appellant was incarcerated in Cuba in the 1960s and 1970s, and endured unlawful incarceration and torture committed by the Cuban government and its codefendants. Appellant obtained a default judgment in state court and now seeks to execute that judgment on patents and trademarks held or managed by appellees in this action, who are allegedly agents and instrumentalities of Cuba. The court affirmed the district court's denial of appellant's request because the Florida state court lacked subject matter jurisdiction to grant the default judgment. View "Jerez v. Republic of Cuba" on Justia Law

Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law

In 2001, ASC and Paragon entered into a contract to develop and support computer software for the Chicago Tribune. This software, called the “Single Copy Distribution System” (SCDS) would allow the Tribune to manage and track newspaper deliveries and subscriptions. Tensions emerged and Paragon terminated the contract in 2003. ASC successfully sued Paragon in Ohio state court, obtaining a declaration that ASC was the sole owner of the SCDS. In federal court, ASC alleged copyright infringement, trademark infringement, breach of contract, conversion, tortious interference with a business relationship, unjust enrichment, and unfair competition based on Paragon’s alleged copying of the SCDS software to use in its DRACI software, developed in 2004 for another newspaper. After eight years of litigation, the district court granted summary judgment to Paragon on all claims. The Sixth Circuit affirmed, stating that ASC had never submitted any evidence identifying the unique protectable elements of SCDS, and that there was insufficient evidence to generate even an implication that DRACI is substantially similar to SCDS. View "Automated Solutions Corp. v. Paragon Data Sys., Inc." on Justia Law

PepperBall is a projectile ball filled with a pepper-spray-like irritant. Police departments, private security firms, and comparable organizations are its primary consumers. Advanced Tactical brought a trademark infringement claim against Real Action and its president, Tran. The district court granted a preliminary injunction. The Seventh Circuit reversed, holding that the district court lacked personal jurisdiction over Real Action, which preserved its objection. There was no evidence that Real Action had the necessary minimum contacts with Indiana to support specific jurisdiction. View "Advanced Tactical Ordnance Sys., LLC v. Real Action Paintball, Inc." on Justia Law