Justia U.S. 4th Circuit Court of Appeals Opinion Summaries

Rosetta Stone appealed from an order granting summary judgment in favor of Google for Rosetta Stone's trademark infringement, contributory and vicarious trademark infringement, and trademark dilution claims. Rosetta Stone also appealed from an order dismissing its unjust enrichment claim under Virginia Law. Rosetta Stone contended that Google's policies concerning the use of trademarks as keywords and in ad text created not only a likelihood of confusion but also actual confusion, as well as misleading Internet users in purchasing counterfeit Rosetta Stone software. The court affirmed the district court's order with respect to the vicarious infringement claim and the unjust enrichment claims. The court vacated, however, the district court's order with respect to Rosetta Stone's direct infringement claim after addressing the likelihood of confusion and the functionality doctrine; contributory infringement claim where the evidence recited by the district court was sufficient to establish a question of fact as to whether Google continued to supply its services to known infringers; and dilution claim where the district court erred by omitting the question of good faith and collapsing the fair-use defense into one question. The court remanded the case for further proceedings. View "Rosetta Stone Ltd. v. Google, Inc." on Justia Law

Plaintiff filed this action alleging trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. 114(1); federal unfair competition under Section 43(a) of the Act, 15 U.S.C. 1125(a); unfair competition and deceptive trade practices under the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), N.C.Gen. Stat. 75-1.1, thereby challenging the use of its federally-registered AGRI-NET trademark by defendants. Plaintiff appealed the district court's order granting summary judgment to defendants on its affirmative defense of laches. The court concluded that the district court erred in determining that defendants established its defense as a matter of law, and, separately, in failing to consider whether laches barred plaintiff's claim for prospective injunctive relief. Accordingly, the court vacated the judgment and remanded for further proceedings. View "Ray Communications, Inc. v. Clear Channel Comm., Inc., et al." on Justia Law

Plaintiff filed a complaint against defendants, Virtual City Vision, Inc. ("VSV") and Van James Bond Tran ("Tran"), alleging federal, state, and common law claims when defendants' newportnews.com domain name was confusingly similar to plaintiff's Newport News registered trademarks and its newport-news.com domain name. VCV raised numerous issues on appeal: the magistrate judge's failure to recuse; the court's assertion of personal jurisdiction over Tran, the district court's grant of summary judgment to plaintiff on the Anticybersquatting Consumer Protection Act ("ACPA") claim; the district court's denial of VCV's request to file a counterclaim; the district court's award of statutory damages and attorney's fees to plaintiff and sanctions against VCV's counsel; and the district court's finding that VCV was not the prevailing party for purposes of an award of attorneys' fees. The court held that the magistrate judge did not abuse his discretion in finding that the circumstances would not cause a reasonable observer to question his impartiality, the district court found sufficient facts to pierce the corporate veil and exercise jurisdiction over Tran, and the district court's grant of summary judgment on the ACPA claim was proper. The court also held that the district court did not abuse its discretion in denying VCV's motion for leave to file a counterclaim. The court further held that the district court did not clearly err in finding that VCV's infringement was exceptional or abused its discretion in awarding attorneys' fees, that VCV's attempt to profit from plaintiff's mark by creating a website focused on women's fashion was sufficiently egregious to merit the statutory damages award, that the award of sanctions was not an abuse of discretion, and that plaintiff's abandonment claim did not make VCV a prevailing party.