SoCal IP Law Group

The SoCal IP Law Blog

Monthly Archives: April 2014

SoCal IP Institute :: April 28, 2014 :: Preliminary Injunctive Relief and Trademark Infringement

Our weekly SoCal IP Institute meeting on Monday, April 28, 2014 will be a discussion of two cases.  The first relates to preliminary injunctive relief in patent cases and the second case relates to trademark infringement.  Brief synopses of the cases appear below.

Trebro Mfg. v. Firefly Equipment and Steven Aposhian, Case No. 2013-1347 (Fed Cir. April 9, 2014) (available here). Trebro Mfg. appeals the district court’s ruling denying Trebro’s preliminary injunction motion. On appeal, the Federal Circuit vacates the district court’s ruling and remands for further proceedings.

The Ohio State University v. Skreened, Ltd., (S.D. Ohio. April 18, 2014) (available here). The district court denied in part and granted in part Ohio State University’s motion for summary judgment relating to trademark infringement.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 28, 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.

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SoCal IP Institute :: April 21, 2014 :: Copyright Registration of Collective Works and Appeals of Ex Parte Reexams

Our weekly SoCal IP Institute meeting on Monday, April 21, 2014 will be a discussion of two cases.  The first relates to a copyright dispute involving a collection of photographs registered by a stock photo company and the second involves an appeal of an adverse ex parte reexamination decision by the patent owner.  Brief synopses of the cases appear below.

Alaska Stock v. Houghton Mifflin, Docket No. 10-36010 (9th Cir. March 18, 2014) (available here). Reversing the district court’s dismissal of a copyright infringement action, the panel held that copyright registration of a collective work registers the component works within it. The panel held that the Register of Copyrights had authority to prescribe a form and grant certificates extending registration to individual stock photographs within a collection where the names of each of the photographers, and titles for each of the photographs, were not provided on the registration applications.

Agreeing with other Circuits, and deferring to the Copyright Office’s interpretation of the Copyright Act, the 9th Circuit panel held that where the photographers had assigned their ownership of their copyrights in their images to the stock agency, and the stock agency had registered the collection, both the collection as a whole and the individual images were registered.

In re Teles AG Informationstechnologien et al., Docket No. 2012-1297 (Fed. Cir. April 4, 2014) (available here). Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH  own all substantial rights in U.S. Patent No. 6,954,453 on a method and apparatus  for transmitting data in a telecommunications network.  The Patent and Trademark Office conducted an ex parte reexamination of the ’453 patent and rejected claims 34–36 and 38 as obvious under 35 U.S.C. § 103.  The Board of Patent Appeals and Interferences affirmed.

Teles brought suit in the United States District Court for the District of Columbia, challenging the Board’s decision pursuant to 35 U.S.C. § 145 (2006). The Federal Circuit agreed with the district court that it lacked subject matter jurisdiction, and hold that the version of § 145 in effect at the time did not authorize a patent owner in an ex parte reexamination to bring suit in district court challenging the Board’s action. But The Federal Circuit held that the district court erred in dismissing the case and instead should have transferred the case as it attempted to do after the dismissal. The Federal Circuit treated the case as having been transferred to the Federal Circuit and considered it as an appeal from the Board’s decision. The Federal Circuit affirmed the Board’s rejection of claim 35 as obvious under § 103.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 21, 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 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.