Intellectual Property Law

Watches Manufactured Abroad Bearing US Copyrighted Design Cannot Be Imported Without Copyright Owner's Consent According to Ninth Circuit

Posted on September 09, 2008
Case: Omega S.A. v. Costco Wholesale, 9th Cir. No. 07-55368 (09/03/08) The Two Sentence Summary: The Ninth Circuit panel reaffirmed their precedent holding that importation and sale of imported "gray market" watches manufactured overseas bearing a copyrighted design registered in the United States was an infringement of copyright...

Breach of Open Source Software License Allows Injunction for Copyright Infringement

Posted on August 18, 2008
Case: Jacobsen v. Katzer, Fed. Cir. No. 2008-1001 (8/13/08)The One Sentence Summary: Applying Ninth Circuit law, the Federal Circuit reversed a denial of preliminary injunction, holding that an open source copyright license requiring attribution as a condition of use and distribution of software could be enforced by preliminary injunction and remanded for a determination of whether preliminary injunction standards were met...

Even Reasonable and Narrow Non-Compete Agreements Are Barred by California Statute

Posted on August 07, 2008
Employment contracts with non-competition clauses are common outside of California, but a California statute, section 16600 of the California Business and Professions Code, prohibits non-compete contracts outside of a few statutory exceptions. In a decision issued on August 7, 2008, Edwards v...

Unsuccessful Patent Claims Did Not Allow Later Malicious Prosecution, Unfair Competition and Antitrust Claims

Posted on July 08, 2008
Case: Fisher Tool Co., Inc. v. Gillet Outillage, 9th Cir. No. 06-55996, 06-56165 (June 30, 2008)The One Sentence Summary: District court properly granted summary judgment for defendants on malicious prosecution, Lanham Act, state law tort and antitrust claims arising out of earlier patent suit on plier patents where defendant and its attorneys had good faith basis to assert patent infringement...

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Exact Digital Models of Cars Not Protected by Copyright

Posted on June 27, 2008
Case: Meshworks v. Toyota, Tenth Cir. No. 064222 (June 17, 2008) The One Sentence Summary: Exact digital models of cars were not copyrightable because there was no creativity involved in their creation. Tenth Circuit Holdings: In derivative works cases, the court must separate out the preexisting work to determine what is copyrightable by the new author...

California Appellate Court Defines Statute of Limitations Period for Third-Party Trade Secret Actions

Posted on June 20, 2008
Case: Cypress Semiconductor Corp. v. Superior Ct. (Silvaco Data Systems), No. H032114 (Cal. Ct. App. May 30, 2008)The One Sentence Summary: Court holds that the statute of limitations on a cause of action for third-party trade secret misappropriation begins to run when the plaintiff has any reason to suspect that the third-party knows or reasonably should know that the information is a trade secret...

Statutory Damages Were Not Available for Series of Infringements Where Work Was Registered After 1st Infringement

Posted on June 16, 2008
Case: Derek Andrew, Inc. v. Poof Apparel Corp., No. 07-35048, Ninth Circuit, June 11, 2008The One Sentence Summary: Statutory damages for copyright infringement were not available where the first infringement in a series occurred before registration...

Patent Exhaustion Doctrine Prevented Pursuit of Customers of a Licensee

Posted on June 16, 2008
Case: Quanta Computer, Inc., et al. v. LG Electronics, Inc., Supreme Court No. 06-937, June 9, 2008.The One Sentence Summary: The patent exhaustion doctrine prevented an action against a buyer of a patented article from a licensee. Supreme Court Holdings:The authorized sale of an article that substantially embodies a patent exhausts the patent holder's rights and prevents the patent holder from invoking patent law to control postsale use of the article...

Parody Web Site That Criticized Critics of the LDS Church Did Not Infringe Trademarks or Constitute Cyber-Squatting

Posted on June 03, 2008
Case: Utah Lighthouse Ministry v. Discovery Computing, 10th Cir. No. 07-4095 (05/29/2008)The One Sentence Summary: The panel affirmed summary judgment in favor of parody web site and domain names that used the mark of UTAH LIGHTHOUSE, a site criticizing the LDS Mormon church, to direct internet users to sites with opposing views...

Preparing Designs for Infringing Products Was Sufficient Preparation to Allow Declaratory Judgment Jurisdiction

Posted on May 28, 2008
Case: Cat Tech. LLC. v. Tubemaster Inc., Fed. Cir. No. 07-1443 (5/28/08)The One Sentence Summary: The second prong of the Federal Circuit's declaratory judgment test survives after the Supreme Court's Medimmune decision, and was met here where the accused infringer had made preparations to infringe...

In Doors Rock Band Dispute, Ninth Circuit Finds Insurer Duty to Defend Against Trademark Claims

Posted on April 02, 2008
Case: Manzarek v. St. Paul Fire & Marine Ins. Co., 9th Cir. No. 06-55936 (3/25/08)The One Sentence Summary: District court erred in dismissing an advertising injury insurance coverage and bad faith lawsuit involving members of the rock band, The Doors, and claims of trademark infringement...

Antisuit Injunction Not Available to Stop Litigation in China Despite Prior California Settlement

Posted on April 01, 2008
Case: TSMC North America v. Semiconductor Mfg. Int'l Corp., California Court of Appeal No. A117182, March 27, 20008In Brief: After the parties settled an earlier patent infringement suit with a settlement agreement providing for California choice of law and submission to California courts for jurisdiction, disputes again arose causing one party to file litigation in California and the other to file a suit in the Peoples' Republic of China...

Patent Office Rule Changes Blocked by District Court's Permanent Injunction

Posted on April 01, 2008
Case: Tafas v. Dudas, Nos. 1:07cv846, 1:07cv1008 (E.D. Va. 4/1/08)Judge James Cacheris of the United States District Court in Alexandria, Virginia issued a permanent injunction blocking the USPTO from implementing new rules for patent prosecution. The rules had been previously held up by a preliminary injunction issued on October 31, 2007...

Use of Trademark in Keyword Search Caused Initial Interest Confusion

Posted on March 04, 2008
Case: Storus Corp. v. Aroa Mktg. Inc., N.D. Cal. C-06-2454 (Feb. 15, 2008)The One Sentence Summary: Summary judgment of initial interest confusion under the Lanham Act was granted for plaintiff where defendant purchased keyword search advertisements using plaintiff's trademark and the advertisement displayed the trademark leading searchers to click on the advertisement...

Amounts Paid By Settling Copyright Defendants Reduces Judgment Against Non-Settling Defendants Under One-Satisfaction Rule

Posted on March 02, 2008
Case: Buc Int'l Corp. v. Int'l Yacht Council Ltd, 11th Cir. No. 05-16151 (2/25/08)The One Sentence Summary: Defendants found liable for copyright infringement should have been allowed to reduce the judgment against them under Federal Rule of Civil Procedure 60(b)(5) by the amount paid by settling defendants because one satisfaction rule applies to copyright claims.

Unfair Competition and Copyright Claims Against Karaoke Competitor Dismissed

Posted on March 01, 2008
Case: Sybersound v. UAV Corp., 9th Cir. No. 06-55221(2/27/08)The One Sentence Summary: Claims that a competitor in the karaoke business infringed copyrights and competed unfairly were dismissed.Ninth Circuit Holdings:Lanham Act 43(a) (15 U.S.C. § 1125(a)) claim for misrepresentations regarding copyright license status could not be brought by competitor who did not own copyrights, so dismissal of claim was proper...

Attorneys' Fees for Bad Faith Trade Secret Claim Improper Where Complaint Did Not Allege Trade Secret Misappropriation

Posted on February 22, 2008
Case: CytoDyn, Inc. v. Amerimmune Pharm., Inc., No. B187661 (Cal. Court of Appeal, 2/20/08)The One Sentence Summary: Complaint alleging unjust enrichment in taking of patents and trademarks did not allow award of attorneys' fees to defendants under California Trade Secrets Act despite erroneous claim for attorneys' fees under Trade Secrets Act in prayer for relief...

Prototype Sewing Machine Sold to the Customer Created On-Sale Bar

Posted on February 21, 2008
Case: Atlanta Attachment Co. v. Leggett & Platt, Inc., No. 2007-1188 (Fed. Cir. 2/21/08)The One Sentence Summary: Sale of a prototype sewing machine to a customer before the critical date created an on-sale bar making the patent invalid.Federal Circuit Holdings:On-sale bar of 35 U...

All Sleekcraft Factors Must Be Considered in Summary Judgment on Trademark Infringement Claims

Posted on February 21, 2008
Case: Jada Toys, Inc. v. Mattel, Inc., No. 05-55627 (9th Cir. 2/21/08)The One Sentence Summary: The panel reversed summary judgment rulings by the district court on trademark infringement, dilution and copyright claims in a dispute between toy makers...

Trade Secret Claims Should Have Been Stayed During Arbitration of Related Contract Claims

Posted on January 15, 2008
Case: Heritage Provider Network, Inc. v. Superior Court, Cal. Court of Appeal, Second District B20129 (January 14, 2008)The One Sentence Summary: In a California state court action alleging breach of contract, unfair competition and misappropriation of trade secrets arising out of canceled merger discussions between two physician groups, the trial court erred in not staying the case pending arbitration of the contract claims where the claims shared common factual issues.

Injunction Prohibiting Use of Unidentified Trade Secrets Was Too Vague

Posted on January 11, 2008
Case: Patriot Homes, Inc. v. Forest River Housing, 7th Cir. No. 06-3012 (January 10, 2008)A preliminary injunction in a trade secret and copyright case enjoined a defendant from "[u]sing, copying, disclosing, converting, appropriating, retaining, selling, transferring, or otherwise exploiting Patriot?s copyrights, confidential information, trade secrets, or computer files...

Patent Anticipated by Prior Art Paper That Shared Diagrams and Descriptions

Posted on January 11, 2008
Case: SRI Int'l, Inc. v. Internet Sec. Sys., Inc., Fed. Cir. No. 2007-1065 (January 8, 2008)On a patent for internet security techniques, a paper published more than one year before the patent was filed invalidated the patent due to anticipation. The panel rejected the argument that the paper was not enabling - shared language and diagrams between the paper and the specification established on summary judgment that the paper was enabling...

Foreign Corporation in Contested TTAB Proceeding Must Produce Corporate Designee Witness Pursuant to District Court Subpoena

Posted on January 01, 2008
Case: Rosenruist-Gestao E Servicos LDA v. Virgin Enters. Ltd., No. 06-1588 (4th Cir. December 27, 2007)The One Sentence Summary: A Portugese company attempting to register a mark in contested proceedings before the TTAB could be compelled by a district court subpoena under 35 U...

Likelihood of Confusion Analysis Is Not Limited to the Goods or Services for Which Mark Was Registered

Posted on January 01, 2008
Case: Applied Information Sciences v. eBay, No. 05-56123, 05-56549 (9th Cir. Dec. 28, 2007)The One Sentence Summary: In a trademark infringement claim, plaintiff can establish a protectable interest by showing it has a registered mark, but the likelihood of confusion analysis is not limited to the goods or services in which the mark was registered...

In Amended Opinion, Ninth Circuit Vacates Injunction Against Google But Directs Consideration of Ease of Stopping Infringement

Posted on December 14, 2007
Case: Perfect 10, Inc. v. Amazon.com, Inc., No. 06-55405 (9th Cir. 12/3/07) Summary: In a copyright infringement case, the panel reversed a district court preliminary injunction stopping Google from displaying thumbnail images of plaintiff?s copyrighted nude photographs because Google was likely to prevail on its fair use defense...

No Need To Engage In Likelihood Of Confusion Analysis Where Consumers Could Not Be Confused About A Product's Origin

Posted on December 13, 2007
Case: Top Tobacco, L.P. v. North Atlantic Operating Company, Inc., Case No. 07-1244 (7th Circuit Court of Appeals, December 4, 2007) The One Sentence Summary: A picture is worth a thousand words: here, one glance is enough to decide that there is no probability of confusion...

Ambiguous Prosecution History That Contradicted Specification Did Not Limit Claim Scope of Means Plus Function Claim

Posted on November 28, 2007
Case: Elbex Video, Ltd. v. Sensormatic Elecs. Corp., Fed. Cir. No. 2007-1097 (11/28/07)Summary: In a suit involving closed circuit television camera control patents, the district court erred in granting summary judgment of noninfringement by construing the term "receiving means" as a monitor in light of ambiguous prosecution history statements...

Broad Non-Hire Clause Covering All Employees of Temp Agency Was Unenforceable Under California Law

Posted on November 28, 2007
Case: VL Systems, Inc. v. Unisen, Inc., 152 Cal. App. 4th 708 (2007)Summary: A broad contract preventing an employer from hiring any former employee of the plaintiff temporary agency without paying a fee was an unenforceable non-compete under Business and Professions Code section 16600...

California Adopts Model State Trademark Law

Posted on November 28, 2007
California?s Governor Arnold Schwarzenegger recently signed into law the Model State Trademark Law (MSTL), replacing California?s previous trademark laws in their entirety.The MSTL:? adopts the USPTO?s goods and services classification and allows a single application to include multiple classifications;? expands the information required to be provided with an application for registration of a mark to a drawing of the mark and three specimens of that mark as it is actually used;? requires that an application include a declaration of accuracy signed by a specified person and would subject that person to a civil penalty of not more than $10,000 for willfully stating as true in the declaration any material fact he or she knows to be false;? reduces the registration period from 10 years to 5 years, and provides for successive 5-year renewal periods;? requires the applicant to state whether the applicant previously attempted to register the mark with the USPTO and if such registration was refused, to state the reason for its rejection...

Ninth Circuit Clarifies Test for Dilution, Finds that ?PerfumeBay? Dilutes ?eBay.?

Posted on November 28, 2007
Case: Perfumebay.com, Inc. v. eBay, Inc., Case No. 05-56794, Ninth Circuit Court of Appeals (November 5, 2007)Summary: For trademark dilution, the similarity requirement may be less stringent in circumstances in which the senior mark is highly distinctive and the junior mark is used for a closely related product, as is the case here...

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