**Note: The Supreme Court affirmed the Eleventh Circuit’s judgment on May 9, 2024. You can read our legal alert about that decision here. In Nealy v. Warner Chappell Music, Inc., 2023 WL 2230267 (11th Cir. Feb. 27, 2023), the Eleventh Circuit rejected the application of a three-year “lookback” period for the purposes of awarding damages…
Category: Intellectual Property
Court Adopts a Double Scienter Requirement for Establishing Violations of Section 1202(b) of the Digital Millennium Copyright Act
In Victor Elias Photography, LLC v. Ice Portal, Inc., 2022 U.S. App. LEXIS 22472 (11th Cir. Aug. 12, 2022), the Eleventh Circuit adopted a “double scienter requirement” for copyright infringement under 17 U.S.C. § 1202(b) of the Digital Millennium Copyright Act (“DMCA”). This standard requires a copyright owner to demonstrate that an alleged infringer had…
“European Wax Center” Trademark Dispute Clarifies “Confusingly Similar” Test Under the ACPA
A divided Eleventh Circuit panel affirmed a district court’s order granting summary judgment in favor of the defendant in a trademark dispute involving the Anti-Cybersquatting Consumer Protection Act (“ACPA”), Boigris v. EWC P&T, LLC, 2021 U.S. App. LEXIS 23399 (11th Cir. Aug. 6, 2021). The case further clarifies the test for whether marks are “confusingly…
“Pinnacle” Trademark Dispute Offers Lessons in Trademark Trial Procedure
The court vacated a $550,000 jury verdict in a trademark dispute teeming with procedural issues, Pinnacle Advertising & Marketing Group, Inc. v. Pinnacle Advertising & Marketing Group, LLC, 2021 U.S. App. LEXIS 22770 (11th Cir. Aug. 2, 2021), but kept alive the possibility of injunctive relief for the plaintiff on remand. The case is a…
A Sticky Situation: Epoxy Company Is Stuck With Evidence of Intent to Copy, and Evidence of Actual Confusion
The interplay between circumstantial evidence under the Lanham Act’s substantive law of trade dress infringement and the rules for summary judgment was at issue in J-B Weld Co. v. Gorilla Glue Co., 2020 WL 6144561 (11th Cir. Oct. 20, 2020). In J-B Weld,all three judges agreed that the district court erred in entering summary judgment…
Defendant Must Prove that Copied Portion of Copyrighted Work is Unprotectable
In Compulife Software Inc. v. Newman, 2020 WL 2549505 (11th Cir. May 20, 2020), the Eleventh Circuit clarified that a plaintiff, having established that the defendant copied part of a copyrighted work, need not prove that the copied portion was legally protectable; the defendant must prove that it was not. The court also reviewed the…
Tax Service’s Registered Trademark’s Suggestiveness Presented Jury Question
In Engineered Tax Services, Inc. v. Scarpello Consulting, Inc., 2020 WL 2478863 (11th Cir. May 14, 2020), the Eleventh Circuit reversed and remanded the district court’s grant of summary judgment for Scarpello Consulting in a trademark dispute over the distinctiveness of the service mark “Engineered Tax Services,” citing previous rulings on substantive trademark law and its …
Supreme Court Upholds Eleventh Circuit Copyright Decision on Legislative Materials
Shortly before the U.S. Supreme Court embarked on its six-day experiment hearing oral arguments by telephone, the Court affirmed the Eleventh Circuit’s judgment in Code Revision Commission v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018), aff’d sub nom. Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020)—a copyright case that we previously covered here and…
Too Late Blues for Guitar Maker’s Copyright Ownership Claims
In Webster v. Dean Guitars, 2020 WL 1887783 (11th Cir. Apr. 16, 2020), the Eleventh Circuit affirmed the district court’s grant of summary judgment for a guitar manufacturer in a copyright dispute over the lightning storm graphic on “Dimebag” Darrell Abbott’s iconic guitar, known as “The Dean from Hell.” The district court properly determined that…
Supreme Court Will Review Eleventh Circuit’s Decision that Official Code of Georgia Annotated Cannot Be Copyrighted
The Supreme Court yesterday granted certiorari to review the Eleventh Circuit’s decision in Code Revision Commission v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018), cert. granted, 2019 WL 1047486 (U.S. June 24, 2019). The question presented for review in Georgia v. Public.Resource.Org, Inc. is whether the principle that “government edicts,” such as statutes and…