SoCal IP Law Group

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Monthly Archives: February 2011

SoCal IP Institute :: February 28, 2011

After a holiday week away, we invite you to join us for a SoCal IP Institute meeting, Monday, February 28 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following cases:

ABB, Inc. v. Cooper Indus., LLC, 2010-1227 (Fed. Cir. Feb. 17, 2011) (case attached).  ABB sought declaratory judgment in the Southern District of Texas that it did not infringe a number of Cooper patents.  ABB was a licensee to the patents as a result of a prior dispute between the two parties.  Whether or not the resulting settlement and license agreement covered the situation was the basis of ABB’s declaratory judgment action.  The S.D. Tex dismissed the case for lack of subject matter jurisdiction as not requiring any application of patent laws and being a purely state law contractual dispute.  After some lengthy discussion, the Federal Circuit reversed the decision because the basis of the claim rested in patent law.

Fleischer Studios, Inc. v. A.V.E.L.A., Inc., No. 09-56317  (9th Cir. Feb. 23, 2011) (case attached).  Fleischer Studios, Inc. sought review of a summary judgment dismissing his copyright infringement and trademark infringement claims.  Fleischer alleged that the defendants sale of their posters featuring Betty Boop infringed both his copyrights and trademarks.

The ownership of Betty Boop appears to have been convoluted for some time, but Fleischer offered a number of chain of title bases for his copyright ownership in the character at the district court.  Fleischer only sought review of one on appeal.  The 9th Circuit found that one of the assignments upon which the plaintiff relied specifically carved out the character of Betty Boop from the assignment of several teleplays in which she was featured.  Accordingly, he lacked the title necessary to maintain a case for copyright infringement.

Fleischer’s only trademark claim was, at best, to a common law word mark for the phrase “Betty Boop”.  The district court granted summary judgment in view of Fleischer’s failure to provide any evidence of ownership of a valid mark.  The 9th Circuit affirmed on the alternative basis that the defendants were not using the image of Betty Boop as a trademark, but instead as functional and aesthetic aspects of the posters.


SoCal IP Institute :: February 14, 2011

SoCal IP Institute
Please join us for the SoCal IP Institute meeting, Monday, February 14 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following cases:

Kwan v. Schlein, 09-5205 (2d. Cir. Jan. 25, 2011) (case attached)  Ms. Kwan was hired by BRB publications in 1998 to provide 100 hours of editing for Mr. Schlein’s book entitled Find it Online.  Ms. Kwan was also to receive a by line as “editor” of the book.  After Ms. Kwan completed the 100 hours, Mr. Schlein asked her to continue editing the book.  The first edition of the book eventually was published in January of 1999 naming Ms. Kwan as an editor.  Second through fourth editions were published in 1999, 2002 and 2004.

Kwan filed suit in January 2005 alleging copyright infringement and attempted to file a copyright registration naming her as co-author.  The application was  later “corrected” to name her as sole author.  The district court granted summary judgment that her “infringement” action was essentially an action for ownership of the copyright that was time-barred as falling outside of the three-year statute of limitations.  The district court also granted Schlein’s request to dismiss its counterclaims without prejudice.

The 2nd Circuit agreed with the district court in all respects.  The summary judgment was proper and the dismissal of counterclaims without prejudice did no legal harm to Kwan.

Lessem v. Taylor, No. 07-10601  (S.D.N.Y. Feb. 3, 2011) (case attached)  Ryan Lessem and Douglas Johnson wrote and recorded “Elevator” in 2002.  It was never commercially distributed, aired on the radio and it never was distributed via the internet.  Mr. Lessem and Mr. Johnson were allegedly attempting to use “Elevator” to land a record deal.  The song “How We Do” was written in 2004 by a number of artists including The Game, Dr. Dre and 50 Cent.  Both songs include the phrase “this is how we do” repeated four times in each chorus.  In 1999, 50 Cent included the phrase “this is how we do” in another song entitled “How to Rob”.  The parties did not dispute that the parties had never met and that the defendants had not received copies of the plaintiff’s music.  However, Mr. Lessem asserted that the producer of “How we Do”, Chris Pope, met and listened to Mr. Lessem’s music while Mr. Lessem worked at Sam Ash music in New York City.

The plaintiffs moved for summary judgment of infringement.  Universal Music Group and Black Wall Street Publishing each moved for summary judgment of noninfringement on the basis of a lack of access.  BWS separately moved on the basis that they do not own the copyright in the allegedly infringing song and did not cause the plaintiff’s alleged damages.

The court granted BWS’ motion and denied both the plaintiff’s and UMG’s motions for summary judgment primarily because factual questions regarding access to the allegedly infringed work and to the copyright protection that should afforded to the allegedly infringed elements remained.  These questions were not suitable for determination on summary judgment.

SoCal IP Institute :: February 7, 2011

SoCal IP Institute
Please join us for the SoCal IP Institute meeting, Monday, February 7 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following cases:

Arlington Indus. V. Bridgeport Fittings, No. 10-1025 (Fed. Cir. Jan. 20, 2011) (case attached)  Arlington is the owner of two patents related to electrical junction box fittings.  The term, “spring metal adaptor” was construed differently in two separate cases involving different Bridgeport products.  In particular, the later case required the “spring steel adaptor” to include a “split” in its ring.  The cases were appealed to the Federal Circuit.  The Court found that the inclusion of the “split” limitation in the second case, while shown in the specification, was not a limitation of the “spring metal adaptor”.  The case is a rather typical analysis of a claim construction issue.  Judge Lourie’s concurrence in part and dissent in part is interesting as a discussion of the difficulty of applying the claim construction process to a later infringer not envisioned at the time the application was prepared.

Tokai v. Easton Enterprises, No. 10-1057, -1116  (Fed. Cir. January 31, 2010) (case attached) Tokai sued Easton as infringing three of its patents related to utility safety lighters.  After claim construction, Tokai moved for summary judgment on Easton’s claims of invalidity and obviousness.  Easton filed a cross-motion for summary judgment of obviousness.  Tokai attempted to incorporate two expert declarations that the district court excluded because Easton had not had an opportunity to cross-examine the experts.  The court then granted Easton’s motion for summary judgment of obviousness.

The Federal Circuit affirmed the district court’s exclusion of the expert declarations.  The Federal Circuit then reviewed the district court’s application of the Graham factors and found no errors.  In short, there was no error with regard to the scope and content of the prior art, the district courts analysis of the differences between the prior art at the asserted claims, the level of skill in the art under Graham or secondary indicia of non-obviousness.

The Federal Circuit then evaluated the obviousness of the claims under KSR.  The Federal Circuit centered on three undisputed facts in its analysis:  the state of the art, the simplicity and availability of components and the explicit need for safer utility lighters.  The Federal Circuit affirmed that these undisputed facts compelled a conclusion of obviousness.