SoCal IP Law Group

The SoCal IP Law Blog

SoCal IP Institute :: April 14, 2014 :: eBook held not to be a new derivative work under Copyright Law; Fed Cir. upholds Rejection of Stone Lion Capitol Trademark.

Our weekly SoCal IP Institute meeting on Monday, April 14, 2014 will be a discussion of a recent copyright and trademark case:  Brief synopses appear below.

Peter Mayer Publishers, Inc. v. Shilovskaya, Case No. 12 Civ. 8867 (PGG)  (S.D.N. Y 3/31/14) (available here).  The issue was whether an eBook version of a commissioned English translation of a Russian novel The Master and Margarita, a Russian novel written by Mikhail Bulgakov, constituted a new derivative work. Shilovskaya owned the copyright in the subject Russian novel. Plaintiff wanted to publish the English version of the novel in the form of an eBook and argued that it had commissioned and copyrighted the translation of the book while the work was in the public domain. The court said it did not.

Stone Lion Capital v. Lion Capital LLP, Case No. 2013-1353 (Fed. Cir. 3/26/2014) (available here).  Stone Lion Capital Partners, L.P.  unsuccessfully appealed the Trademark Trial and Appeal Board’s decision refusing registration of the mark “STONE LION CAPITAL” due to a likelihood of confusion with opposer Lion Capital LLP’s  registered marks, “LION CAPITAL” and “LION.”

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 14, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: April 7, 2014 :: Arbitration clauses in licensing agreements and Nonobviousness standards in design patents

Our weekly SoCal IP Institute meeting on Monday, April 7, 2014 will be a discussion of arbitration clauses in licensing agreements and nonobviousness standards in design patents. Brief synopses appear below.

Radware, Ltd. and Radware, Inc. v. F5 Networks, Case No. C-13-02024 (N. Dist. of Cal. 12/23/2013) (available here).  Radware sued F5 for patent infringement in the Northern District of California. F5 Networks counterclaimed asserting patent infringement of four of its patents. Radware then brought a motion to compel arbitration based on a licensing agreement entered into the parties previously with respect to the patents being asserted by F5. The court denied Radware’s motion to compel arbitration on the basis that the type of infringement was not covered under the arbitration clause and therefore the parties did not agree to arbitrate this issue. 

MRC Innovations, Inc. v. Hunter Mfg., LLP and CDI International, Inc., Case No. 2013-1433 (Fed. Cir. 4/2/2013) (available here). MRC is the owner of two design patents for jerseys for dogs. For design patents, the test under 103 is whether the “claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” The Federal Circuit affirmed the district court’s ruling finding both patents invalid as obvious.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 7, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: March 31, 2014 :: Reggaeton Arguments and the Meaning of “Substantially”

Our weekly SoCal IP Institute meeting on Monday, March 31, 2014 will be a discussion of two cases.  The first relates to a reggaeton copyright dispute and the second involves a discussion of the meaning of “substantially” in a patent claim.  Brief synopses of the cases appear below.

Alicea v. Machete Music, Miscellaneous Docket No. 12-1548 (1st Cir. March 7, 2014) (available here). In this case, a group of “reggaeton” musicians brought suit against Machete Music (a division of UMG Recordings, Inc. and several individuals) as infringing copyrights in seven songs they wrote and produced under contract with producer Fancisco Saldana.  Reggaeton music is described by the court as:

a musical genre originating in Puerto Rico and boasting such diverse origins as reggae, hip hop, salsa, and meringue

An example of one of the songs at issue appears here:

The melodies later sung by “Erre XI” (in the video above and other songs) are largely identical to those created by the plaintiffs, but the vocals and portions of the musical instruments were replaced on the tracks by other artists.  The plaintiffs brought suit after the albums were released in 2008, alleging copyright infringement of the compositions (not the sound recordings).  Several individual defendants were dismissed from the complaint prior to this opinion, with only UMG and Machete remaining until this opinion.

The plaintiffs only began the process of registering copyrights in the compositions six months after the lawsuit was filed.  Even then, the attempted registration in the composition was based upon earlier, unauthorized recordings of the original artists.   The district court dismissed the copyright claims pointing out that registration is a prerequisite under 17 U.S.C.  411(a) to filing a copyright infringement complaint.  Even after the magistrate’s recommendations to dismiss the case one year and almost two years after the case was filed, the plaintiff had still not convinced the Copyright Office to register the compositions or whether supplying recordings were adequate deposit copies for registration.  UMG and Machete sought summary judgment and the district court granted the motion.  Two of the copyright registration certificates issued after the dismissal and the plaintiffs sought reconsideration.  This request was denied.

The First Circuit pointed out that registration (or in some circuits an accepted, complete application to register) is a prerequisite to filing a copyright infringement lawsuit.  Because the record was clear that there was no registration and not even an accepted application in this case, dismissal was appropriate.

An individual claim by one plaintiff regarding an alleged agreement was dismissed (and affirmed by the 1st Circuit) for failure to proffer any evidence of such an agreement.  Another claim for the plaintiffs based upon an alleged profit sharing agreement regarding the songs was also dismissed (and affirmed) for failure to plead (or prove) any third party beneficiary relationship to the agreement which was with one plaintiff only. Several other issues, apparently in a poorly-drafted complaint and poorly-conducted litigation, were resolved in favor of the defendants and the decision below was affirmed in full.

Vederi v. Google, Docket No. 2013-1057, -1296 (Fed. Cir. March 14, 2014) (available here). In this case, Judge Kozinski, sitting by designation on at the Central District of California  is reversed for erring in claim construction of a crucial phrase in the case. Vederi sued Google for patent  infringement on October 15, 2010, alleging that Google’s “Street View” infringed various claims of four related patents.  The patents relate to methods for creating synthesized images of a geographic area through which a user may then visually navigate via a computer.  Verderi asserted the patents against Google’s “street view” product within its maps application.

The dispute on appeal concerns the “substantially elevations” limitation, which appears in all of the asserted claims. The district court concluded that Google did not infringe any asserted claims after construing the term “images depicting views of objects in a geographic area, the views being substantially elevations of the objects in the geographic area” as “vertical flat (as opposed to curved or spherical) depictions of front or side views.” Thus, under the trial court’s reading of the claims, spherical or curved images fell outside the scope of Vederi’s patent claims.  According to Google, it does not infringe the asserted patents because its product produces images and views that are curved or spherical, and never flat.

After Markman, the district court agreed, adopted a construction of the term “substantially elevations” as “vertical flat (as opposed to curved or spherical) depictions of front or side views.”  Google then won on summary judgment of non-infringement.

The Federal Circuit found that the district court here had given insufficient weight to the word “substantially” in the phrase “substantially elevations.”  Google contended otherwise on a number of bases, but the Federal Circuit found that the provisional application included a description of a 360 degree camera and that prosecution certainly included no clear disavowal of spherical or curved images.  As a result, the Federal Circuit vacated and remanded.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 31, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

The Ventura BioCenter April 3, 2014 Biotech Law Seminar – 3D Printers: Intellectual Property Issues

On Thursday, April 3, 2014 from 7:30 to 9:00 am Steven C. Sereboff will be making a presentation for the Ventura BioCenter entitled “3D Printers: Intellectual Property Issues.”  The presentation will take place at the Ventura BioCenter located at 1176 Tourmaline Dr, Thousand Oaks, CA 91320  Admission is free to the public.  For lawyers seeking MCLE, the cost is $20 for non-VCBA Biotech members, and $15 for members.  Please RSVP using this email address.  The discussion will include consideration of the following:

  • Is my 3D printer making me a criminal?
  • Will my company be sued because my employees are having fun with the 3D printer?
  • Should I worry about competitors 3D-printing my products?
  • How can I stop the general public from ripping me off?
  • Why are laws applied to 3D-printing different than those applied to 2D-printing?

For more info, please contact:

Panda Kroll, Chair, VCBA Biotech Law Section
Greg Cauchon, Director, Ventura BioCenter

SoCal IP Institute :: March 24, 2014 :: 9th Circuit Reverses Denial of Preliminary Injunction in a Copyright Case; A jury in the Northern District of California has Criminalized the Theft of Trade Secrets

Our weekly SoCal IP Institute meeting on Monday, March 24, 2014 will be a discussion of a recent 9th circuit decision and a criminal trade secret jury trial.  Brief synopses appear below.

Garcia v. Google et. al., Case No. 12-57301 (9th Cir. Feb. 26, 2014) (available here.).  Here, the panel reversed the district court’s denial of a preliminary injunction.  Plaintiff had requested removal from YouTube.com of an anti-Islamic film that used a performance that the plaintiff made for a different film.  The panel concluded that the plaintiff established a likelihood of success on the merits because she proved an independent copyright interest in her performance; Garcia argued that she never intended her performance to be part of a joint work and that her fixed performance, however minimal, warrants independent copyright protection as to the portion of her contribution, which the panel agreed with.  The panel further held that the plaintiff established a likelihood that irreparable harm because she was subject to death threats.

On March 5, 2014, a federal jury in San Francisco found a California businessman and a former DuPont Co. engineer guilty of conspiring to steal DuPont’s proprietary method of manufacturing titanium dioxide and selling the information to Chinese government-owned companies for $28 million.  Among other things, they were convicted of trade secret theft and represent the first convictions under the Economic Espionage Act of 1996. The FBI issued the following press release, accessible here.   On March 19, defendants filed a Motion for Acquittal, arguing among other things that trade secret theft should not be criminalized.  You can view the brief here:  Liew acquittal.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 24, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: March 17, 2014 :: Failure to Consider Distinct Claims and Functionality in Trademark Applications

Our weekly SoCal IP Institute meeting on Monday, March 17, 2014 will be a discussion of patent infringement and venue. Brief synopses appear below.

Wells Fargo v. ABD Insurance, Case No. 13-15625 (9th Cir. Mar. 3, 2014) (available here).  Here, Wells Fargo purchased a company called ABD Insurance and Financial.  Wells Fargo began the process of integrating ABD into Wells Fargo and, as a part of that process, started rebranding.  However, Wells Fargo maintained the website, still used the name in marketing materials and accepted payments under the name.  The prior owners of ABD started a new company shortly after Wells Fargo allowed the ABD trademark registration to lapse.

Wells Fargo sought a preliminary injunction and the district court considered the trademark claim (only) and denied the injunction.  The 9th Circuit reversed stating that false advertising and trademark infringement are separate claims that must be analyzed independently of one another.  The 9th Circuit also gave some guidance on consideration of actual confusion evidence at the preliminary injunction phase and remanded for further consideration.

In re Delta T,  Serial No. 77839055 (T.T.A.B. March 7, 2014) (available here). Delta T sought to register a yellow “fan tip” as a design mark.

mark

The fan tip was already the subject of a U.S. patent.  The application was refused registration on three bases: (1) failure to respond to a request from the examining attorney, (2) functionality, and (3) failure to provide a specimen corresponding to the applied-for mark.  Delta T appealed to the TTAB.

First, the TTAB disposed of the “failure” to respond by saying that the examining attorney had sought a specimen showing the mark prior to “application” to the fan.  The attorney for Delta T responded that nothing was applied prior to the fan coming into existence and, as such, could not respond to the request other than to say that it was impossible to comply.  The TTAB agreed, stating that the explanation was sufficient respond to the examining attorney’s request.

Next, the TTAB tackled the functionality issues with the test from Morton-Norwich: which includes the following factors:

  1. the existence of a utility patent disclosing the utilitarian advantages of the design;
  2. advertising materials in which the applicant touts the design’s utilitarian advantages;
  3. the availability to competitors of functionally equivalent designs; and
  4. facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

Here, a patent existed and the functional features were touted in marketing materials.  Delta argued that yellow was not functional, but the TTAB indicated that this does not convert a functional mark into a non-functional one.

Finally, the TTAB found that the specimen (showing the mark in three dimensions as applied to a fan) differed from the mark applied for (in two dimensions).  The specimen can be seen here:

PowerFoil X copy

Accordingly, the refusal was affirmed on the final two bases.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 17, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: March 3, 2014 :: Patent Infringement and Venue Cases

Our weekly SoCal IP Institute meeting on Monday, March 3, 2014 will be a discussion of patent infringement and venue. Brief synopses appear below.

Realtime Data v. Morgan Stanley, Case No. 2013-1092 (Fed. Cir. 1/27/2014) (available here). Realtime owns patents relating to compressing data for transmission. The defendants use a standard called FAST which is used in the financial industry for transferring financial information. The district court granted summary judgment of noninfringement and also granted summary judgment of invalidity. On appeal, the Federal Circuit affirmed the district court’s rulings. 

In re Apple, Miscellaneous Docket No. 156 (Fed. Cir. 2/2013) (available here). In this case, Apple filed a writ of mandamus requesting that the case be transferred to the Northern District of California from the Eastern District of Texas. The Federal Circuit denied Apple’s motion.

In re Barnes and Noble, Miscellaneous Docket No. 162 (Fed. Cir. 2/2013) (available here). In this case, Barnes and Noble filed a writ of mandamus requesting that the case be transferred to the Northern District of California from the Western District of Tennessee. The Federal Circuit denied Barnes and Noble’s motion.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 3, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: February 24, 2014 :: Recent Case Law regarding Patent Invalidity (Medtronic v. Edwards) & Authorship Claims under the Copyright Act (Brownstein v. Lindsay)

Our weekly SoCal IP Institute meeting on Monday, Feb. 24, 2014 will be a discussion of a recent case regarding invalidity of certain claims of a patent, and another recent case regarding a claim under the Copyright Act seeking a declaratory judgment of joint authorship.  Brief synopses appear below.

In MEDTRONIC COREVALVE, LLC v. EDWARDS LIFESCIENCES CORP. (Fed. Cir. 1/22/14) (available here).  Medtronic CoreValve  appeals from the judgment of the United States District Court granting summary judgment to Edwards of invalidity of certain claims of the ’281 patent. Summary judgment was affirmed because Medtronic failed to specifically reference each earlier filed application in the intervening applications in the chain of priority for the ’281 patent under 35 U.S.C. § 120; the district court was correct to limit the priority date of the patent to no earlier than April 10, 2003

In BROWNSTEIN v. LINDSAY (3rd Cir. Nos. 12–2506, 12–4471. Argued July 10, 2013. — January 29, 2014) (available here), Appellant Brownstein sought declaratory judgment of joint authorship of an ethnic identification system that he created with Appellee Tina Lindsay called “E-Tech”.  At trial, the District Court granted Appellee’s judgment as a matter of law under Rule 50(a) on Brownstein’s joint authorship claim. The District Court found that Brownstein’s claim was time-barred and that he could not succeed on the merits of his claim based on the evidence adduced at trial. The Court of appeal reversed and remanded for a new trial, stating that  an authorship claim arises and accrues when a plaintiff’s authorship has been “expressly repudiated” and that courts have no authority to cancel copyright registrations.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, Feb. 24, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: February 3, 2014 :: Damages in Trademark Infringement Suits and Policing IP on 3rd Party Internet Retailer Websites

Our weekly SoCal IP Institute meeting on Monday, February 3, 2014 will be a discussion of the effect of damages in trademark infringement suits (15 U.S.C. §1117) – when damages are preferred over injunctions, attorney’s fees in various Circuits, attorney’s fees along with statutory damages for counterfeiters, and what a counterfeit is.  Also, a brief discussion of the presumption of willful infringement if one registers a domain under a false address. The cases that will be the focus of our discussion appear below.

Discussion of several different Circuit Court decisions on these issues, including: Nightingale Home Healthcare v Anodyne Therapy LLC, 626 F.3d 963 (7th Cir. 2010); K and N Engineering Inc v. Sarah Bulat et al., 510 F.3d 1079 (9th Cir. 2007); and Louis Vuitton Malletier S.A., v. Ly USA, Inc., 676 F.3d 83 (2d. Cir. 2012).  In addition, there will be a presentation on and discussion of how to police IP on 3rd party internet retailer websites.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, February 3, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: January 27, 2014 :: Burden of persuasion of infringement in a declaratory judgment action and Contributory Infringement under the ACPA

Our weekly SoCal IP Institute meeting on Monday, January 27, 2014 will be a discussion of the burden of persuasion of infringement in a declaratory judgment action and contributory infringement under the ACPA . Brief synopses appear below.

Medtronic, Inc. v. Mirowski Family Ventures LLC, Case No. 12-1128 (U.S. SCt. 1/22/2014) (available here). Mirowski owns patents related to implantable heart stimulators. Medtronic entered into a licensing agreement with Mirowski which allowed Medtronic to practice Mirowski’s patents in exchange for royalty payments. Mirowski later informed Medtronic that many of Medtronic’s products infringed Mirowski’s patents. Medtronic then brought a declaratory judgment action against Mirowki. The district court held that Mirowski had the burden of proving infringement, since they were the party asserting infringement. On appeal, the Federal Circuit reversed. The Supreme Court reversed the Federal Circuit’s decision and held that the patentee holds the burden of persuasion to provide infringement.

Petronas v. GoDaddy.com, Case No. 12-15584 (9th Cir. 12/4/2013) (available here). Plaintiff Petronas sued GoDaddy.com alleging that GoDaddy.com engaged in contributory cybersquatting under the ACPA. The district court held that the ACPA did not provide a cause of action for contributory cybersquatting. The 9th Circuit affirmed the district court’s decision.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 27, 2014, at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

Follow

Get every new post delivered to your Inbox.

Join 56 other followers