SoCal IP Law Group

The SoCal IP Law Blog

Category Archives: Attorney’s Fees

SoCal IP Institute :: November 3, 2014 :: S.D.Cal Denies Attorneys Fees in Copyright Case; N.D. Cal holds no patent infringement where sales are made abroad

Our weekly SoCal IP Institute meeting on Monday, October 27, 2014 will be a discussion of two recent California District Court Cases:

Reinicke v. Creative Empire LLC, Case No. 12-vc-1405 (S.D. Cal 10/22/14) (available here).  Here, the district court denied CE’s motion for an award of fees and costs despite Plaintiff’s inability to establish copyright infringement.  The Court held there was a reasonable legal and factual basis to support the copyright infringement claim. Further, the court did not want to discourage individual language developers from asserting copyright ownership.

Ziptronix v. OmniVision Tech., Case No. 10-05525 (ND Cal 10/21/14) (available here). Here, Ziptronix sued OmniVision, Taiwan Semiconductor Manufacturing Co., Ltd and TSMC North America Corp. (both referred to as “TSMC”) for nine counts of patent infringement involving image sensor technology used in smartphones. TSMC prevailed on summary judgment because the subject wafers –thin slices of semiconductor material, such as a crystalline silicon, used in electronics — were not sold within the United States.  Ziptronix’s position that TSMC and OmniVision negotiated and executed contracts for the sale of the wafers in the United States failed as the Court held that the contracts contemplated delivery and performance outside the US.

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

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SoCal IP Institute :: January 20, 2014 :: Inhale Inc. v. Starbuzz Tobacco (9th Cir. 2014) & In re Kent Pederson (TTAB Dec. 30, 2013)

Our weekly SoCal IP Institute meeting on Monday, January 20, 2014 will be a discussion of the following cases:

In INHALE, INC. V. STARBUZZ TOBACCO, INC. (9th Cir. 2014), the 9th Circuit held that a copyright for a  hookah water container could not be enforced because it was a useful article and it did not incorporate sculptural features that could be identified separately from, and were capable of existing independently of, the container’s utilitarian aspects.  The panel also affirmed the award of attorneys  fees to the defendant.  The case can be accessed here.

In IN RE KENT PEDERSON (TTAB Dec. 30, 2013), on an appeal from a final refusal to register the mark “LAKOTA” for Medicinal herb remedies, the Board upheld the refusal based on the examining attorney’s findings that the applied-for mark consists of or includes matter which may falsely suggest a connection with the Native American Lakota people.  The case can be accessed here: Lakota case.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 20, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of California MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 19, 2013 ::

Our weekly SoCal IP Institute meeting on Monday, August 19, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Seltzer v. Green Day, Inc., Case No. 11-56573 (9th Cir. August 7, 2013) (available here).  Plaintiff Derek Seltzer sued the band Green Day for using a backdrop having one of Seltzer’s drawings in one of Green Day’s videos. On summary judgment, the district court held that Green Day’s use fair use. The district court then awarded attorney’s fees in favor of Green Day. On appeal, the Federal Circuit affirmed the district court’s finding that the use was fair use, but vacated the award of attorney’s fees.

Monolithic Power Systems v. O2 Micro, Case No. 2012-1221 (Fed. Cir. August 13, 2013) (available here). The parties here are competitors in the integrated circuit industry and have been involved in litigation for over a decade. The district court held the case exceptional and awarded over $9M in attorney’s fees. The Federal Circuit affirmed the district court’s decision.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 19, 2013 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 :: September 17, 2012 :: Latches and Covenants Not to Compete

We will be discussing one Ninth Circuit case and one California Court of Appeal case during our weekly SoCal IP Institute meeting on Monday, September 17, 2012. Brief synopses are presented below.

Petrella v. Metro-Goldwyn-Mayer, Inc., Case Nos. 10-55834 (9th Cir. August 29, 2012) (attached).

Petrella sued Metro-Goldwyn-Mayer and other movie studios for copyright infringement, as well as unjust enrichment and accounting. Petrella alleged that defendants infringed her purported interest in a book and two screenplays that together formed the basis for the 1980 motion picture “Raging Bull.”

The Ninth Circuit held that plaintiff’s copyright infringement claim was barred by laches and therefore the Court did not reach the merit of the claim itself.  The Court also held that, because laches was an equitable defense, the district court was correct in holding that laches also barred plaintiff’s unjust enrichment and accounting claims. The Court further held that the district court did not abuse its discretion in denying defendant’s sanctions and attorney’s fees motions because the denial was based on a lack of evidence of infringement but solely on the ground that plaintiff’s claims were barred by laches

Fillpoint, LLC. v. Maas, Case No. G045057 (Cal. Ct. App. August 24, 2012) (attached).

Michael Maas was an employee of Crave Entertainment Group, Inc., which was acquired by Handleman Company.  As part of the acquisition, Maas executed a stock purchase agreement selling all of his stock in Crave to Handleman.  The stock purchase agreement contained a three-year non-compete clause.  Maas also entered into a new employment agreement with Crave containing a one-year non-compete, customer non-solicit, and employee non-solicit covenants, all of which would begin to run upon the termination of his employment. The stock purchase agreement included an integration clause referencing the form employment agreement. Additionally, Maas’ employment agreement referred back to the stock purchase agreement and stated that the stock purchase agreement would prevail in the event of any conflict between the agreements.

Maas eventually resigned from Crave three years after the acquisition and about six months later, began working for a competitor of Crave.  Fillpoint, LLC, which had acquired Crave from Handleman, brought suit against Maas for breach of his employment agreement. The Superior Court of Orange County concluded that: (1) the covenants in the stock purchase agreement and the employment agreement were separate; and (2) the covenants not to compete and not to solicit in the employment agreement were unenforceable under California’s general rule against such covenants (Business and Professions Code Section 16600).

On appeal, the Court of Appeal for the Fourth District found that the trial court erred in its conclusion that the covenants in the stock purchase agreement and the employment agreement were separate.  The Court of Appeal held that the agreements must be read together as an integrated agreement because of the cross references between the stock purchase agreement and employment agreement.  Furthermore, the two agreements were part of a single transaction because they were entered into between the same parties and around the same time. The Court then determined that the covenants in the employment agreement were intended to restrict Maas’ right to pursue his profession in the future and, thus, did not meet Section 16601’s limited exception.  For these reasons, the Court held that the covenants in the employment agreement could not “be reconciled with California’s strong public policy permitting employees the right to pursue a lawful occupation of their own choice” and were unenforceable.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 17, 2012 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 Attalla by 9 am Monday morning.

SoCal IP Institute :: November 21, 2011 :: EFX Performance Inc. v. Lindley et al. Jury Trial

We will be discussing a jury trial involving copyright and trademark issues in which our office represented a defendant during our weekly SoCal IP Institute meeting on Monday, November 21, 2011. A brief summary of the case is presented below.

EFX Performance Inc. v. Lindley et al., Case No. CV10-1261 (C.D. Cal. 2011). EFX Performance sells bracelets incorporating “holographic technology” that is asserted to improve balance and individual physical performance.  EFX Performance brought suit against their ex-CEO, Dirk Lindley and our client, Matthew Lam for copyright infringement, trademark infringement and several state law claims based upon alleged sales of EFX-branded products in Singapore. Mr. Lindley was unrepresented by counsel.  Our defense of Mr. Lam primarily focused on the fact that all of his alleged actions took place completely in Singpore.  Wholly overseas conduct is not generally actionable under U.S. law.

We successfully obtained summary judgment on three of the eight claims asserted against Mr. Lam prior to trial, including the copyright claim. This was important to our client because copyright claims may be subject to a grant of attorney’s fees to the prevailing party.  Trial began on October 25 with three trademark-related claims, a conversion claim and an equitable claim remaining as to Mr. Lam.  A jury trial was conducted for three full days before the parties came to a confidential settlement agreement.  We will discuss the strategy leading up to the trial, the motions filed by the plaintiff and Mr. Lam and the jury trial process on Monday.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 21, 2011 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 Amanda Jones by 9 am Monday morning.

SoCal IP Institute :: October 17, 2011 :: Irreparable Harm in Patent Cases after eBay and Copyright Attorney’s Fee Awards

We will be discussing one patent case and one copyright case  in our weekly SoCal IP Institute meeting on Monday, October 17, 2011. Brief synopses are presented below.

Robert Bosch LLC v. Pylon Mfg. Corp., Case No. 2011-1096 (Fed Cir. Oct. 13, 2011) (attached).  The Federal Circuit addresses the circumstances under which an injunction should be granted in patent cases in a post-eBay world.  After a jury found two Bosch wiper-blade patents valid and infringed by Pylon, Bosch moved for a permanent injunction.  The court denied Bosch’s request finding that Bosch failed to show irreparable harm.

On appeal, the Federal Circuit confirmed that the eBay factors must be considered in the determination of whether to grant an injunction the patent context.  The Federal Circuit pointed out that the lower court had found the presence of other infringers and the “non-core” business of Bosch as factors weighing against the grant of an injunction.  This was legal error.

However, most importantly, the Federal Circuit found clear error in the lower court’s failure to find irreparable harm.  In particular, the Federal Circuit urged the court to consider the fundamental nature of patent rights when making an irreparable harm determination.  From the facts available, the appeals court found that there was clearly irreparable harm to Bosch.  The case was reversed and remanded for entry of Bosch’s requested permanent injunction.

Airframe Sys. Inc. v. L-3 Comm. Corp., Nos. 10-2001; 11-1169 (1st Cir. Sept. 14, 2011 (attached).  Airframe sued L-3 for copyright infringement when it discovered, after years of licensing its ARMS software to L-3, that an L-3 engineer had obtained and altered an older version of the ARMS software for use with newer computers.  In particular, the engineer updated the software (originally created in 1981 and last updated in 1984) to be written in PHP.  Airframe sued based upon the licensed 1984 source code.  However, the only evidence in the record as to the substance of that source code was a later updated 2009 version of the software.  The court found that the comparison was inadequate to establish the contents of the 1984 source code and, thus, any comparison with the L-3 software was irrelevant, absent some basis of reference.  Accordingly L-3’s grant of summary judgment at the district court level was affirmed.

Second, L-3 cross-appealed the district court’s denial of its motion for attorney’s fees.  L-3 contended that the district court failed to adequately consider 1st Circuit precedent that allowed for an award of attorney’s fees for cases that are “objectively, quite weak.”  The 1st Circuit evaluated the lower court’s order and determined that it had adequately considered the relevant Supreme Court precedent and, therefore, affirmed the denial of an award of attorney’s fees.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 17, 2011 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 Amanda Jones by 9 am Monday morning.