Summary
The Eleventh Circuit reviewed claims arising from Clarke Checks’ allegedly copied bank-check products and related trade names. The court affirmed summary judgment against Harland’s copyright claim and upheld the jury’s findings of trademark and trade dress infringement, while remanding for clarification of the injunction. The opinion analyzes copyrightability of blank forms and likelihood of confusion under trademark law.
Topics
Practice areas
Questions Presented
- Whether Harland's Memory Stub product or the claimed Memory Stub expression was copyrightable.
- Whether substantial evidence supported the jury's finding that Clarke's Entry Stub mark was likely to cause confusion with Harland's registered Memory Stub mark.
- Whether substantial evidence supported the jury's finding that Clarke infringed Harland's trade dress by copying primarily nonfunctional features of the Memory Stub product.
- Whether the district court's permanent injunction complied with Federal Rule of Civil Procedure 65(d)'s requirement that prohibited acts be described in reasonable detail.
Holdings
- The Memory Stub product was not copyrightable because it was a blank form designed to record information and did not itself convey information or contain original pictorial expression.
- Substantial evidence supported the jury's finding that Clarke's Entry Stub mark was likely to cause confusion with Harland's registered Memory Stub mark.
- Substantial evidence supported the jury's finding that Clarke infringed Harland's trade dress by copying primarily nonfunctional features that contributed to a likelihood of confusion.
- The injunction was insufficiently specific because it prohibited confusingly similar trade dress without identifying the objective acts Clarke was required to stop.
Key quotations
“Consequently, we affirm the grant of summary judgment on the ground that the "Memory Stub expression" was not copyrightable.” (¶ 15)
“Thus, although we would not necessarily have found a likelihood of confusion on these facts ourselves, we hold that there was substantial evidence to support the jury's finding.” (¶ 45)
“Accordingly, we vacate the portion of the district court's order quoted above and remand to the district court for entry of an order which specifically describes the acts which are prohibited by the permanent injunction.” (¶ 63)
Factual background
Harland marketed a desk-style checkbook incorporating an intermediate, detachable carry-around stub and carrying case, sold as the Odyssey Collection and branded with the registered mark Memory Stub. Clarke later developed and marketed a substantially similar product, using an Entry Stub mark and a nearly identical carry-around case, after reviewing Harland's catalogs and product. The parties sold competing bank-check products through the same banking institutions and to overlapping customers, and the record included two instances of actual confusion involving orders for the competing products.
Procedural history
Harland sued Clarke under the Lanham Act, the Copyright Act, and Georgia law after Clarke marketed a bank-check product modeled on Harland's Odyssey Collection and used the mark Entry Stub for a product resembling Harland's Memory Stub. The district court dismissed or granted summary judgment against the copyright claim, while the jury found trademark and trade-dress infringement and awarded damages; the court entered judgment on the remaining claims and issued an injunction. Both parties appealed: Harland challenged the copyright ruling, and Clarke challenged the infringement findings and the scope of the injunction.
Remand instructions
The district court must vacate and redraft the permanent injunction so that it specifically describes the acts Clarke is prohibited from taking, guided by the opinion's distinction between functional features, which may be copied, and primarily nonfunctional trade-dress features. The judgment is affirmed in all other respects, and each party bears its own appellate costs.