SoCal IP Law Group

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Category Archives: Infringement

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 :: September 22, 2014 :: A Glance at Current Copyright Happenings

Our weekly SoCal IP Institute meeting on Monday, September 22, 2014 will be a discussion of recent copyright cases. Brief synopses of the cases we will discuss appear below.

Princeton Payment Solutions, LLC v. ACI Worldwide, Inc. et al, No. 1:13-vc-852 (ED Va. August 15, 2014) (available here). In this computer software copyright case, the Court granted summary judgment in favor of the defendants.  This summary judgment opinion hinged on the issue of who owned the software where the software was developed by an independent contractor who did not assign her rights to plaintiff until after the commencement of this suit.

Actuate Corp. v. Fidelity Nat’l., No. C 14-02274 RS  (N.D. Cal. August 21, 2014) (available here).  In this case, the Court granted Fidelity’s motion to dismiss regarding a claim for software copyright infringement, wherein the License Agreement that Fidelity allegedly breached failed to establish any numeric limits on Fidelity’s right to install and distribute the software, but instead merely required Fidelity to pay for the licenses it required according to a payment schedule attached to the agreement.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 22, 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 :: 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 :: October 21, 2013 :: Pharrell Williams And Will-I-Am in IP Dispute; Bentley Prevails in Trademark Dispute

Our weekly SoCal IP Institute meeting on Monday, October 21, 2013 will be a discussion of Singer-songwriter Pharrell Williams lawsuit for declaratory relief that his trademark “I am OTHER” company is not infringing on Will.i.am’s “I AM” trademark.  The complaint can be found here, and the Answer with Counterclaims can be found here.

We will also discuss Bentley’s successful trademark lawsuit against a pair of auto customization companies in Florida, barring them from continuing to manufacture and install body kits based on Bentley’s GTC model. A copy of the order can be seen here.  b

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 21, 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 :: October 7, 2013 :: Trademark Infringement and Copyrights in Space

Our weekly SoCal IP Institute meeting on Monday, October 7, 2013 will be a discussion of trademark infringement and copyrights in space. Brief synopses appear below.

Trader Joe’s v. Hallatt, Case No. 13-768 (D.Ct. Wash. 10/2/2013) (available here). Plaintiff Trader Joe’s sued Defendant Hallant alleging trademark infirngement, unfair competition and other causes of action. Defendant Hallant owns and operates a grocery store under the name “Pirate Joe’s” in Vancouver. Defendant Hallant purchased products at Trader Joe’s stores in Washington and then resold them at his store in Vancouver. Defendant Hallant brought a motion to dismiss for lack of subject matter jurisdiction. The district court granted Defendant’s motion.

“How do Copyrights Work In Space?”, The Economist (May 22, 2013) (available here). Canadian astronaut Chris Hadfield recorded a version of David Bowie’s, “Space Oddity” while on the International Space Station. While Commander Hadfield had obtained permission from David Bowie to record and distribute the song, it still raises an interesting issue as to how copyrights apply to works recorded and distributed while in space. We will have a roundtable discussion about copyrights in space. 

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 7, 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 :: April 1, 2013 :: Contributory Copyright Infringement and “Contested Cases” before the PTO

Our weekly SoCal IP Institute meeting on Monday, April 1, 2013 will be a discussion of one Federal Circuit case regarding patent divided infringement and a 9th Circuit case regarding copyright fair use.  Brief synopses of the cases appear below.

Columbia Pictures et al. v. Gary Fung; Isohunt Web Tech., Inc., Case No. 10-55946 (9th Cir. March 21, 2013) (available here).

The 9th Circuit affirmed in part and vacated in part the district court’s judgment in favor of film studios, which alleged that the services offered and websites maintained by the defendants induced third parties to download infringing copies of the studios’ copyrighted works.  The panel held that under Metro-Goldwyn-Mayer Studios, Inc. v. Grokster Ltd., 545 U.S. 913 (2005), the defendants were liable for contributory copyright infringement on an inducement theory because the plaintiffs established (1) distribution of a device or product, (2) acts of infringement, (3) an object of promoting the product’s use to infringe copyright, and (4) causation in the defendants’ use of the peer-to-peer file sharing protocol known as BitTorrent.

The panel also held that the defendants were not entitled to protection from liability under any of the safe harbor provisions of the Digital Millennium Copyright Act, including safe harbors provided by 17 U.S.C. § 512(a), (c), and (d) for transitory digital network communications, information residing on systems or networks at direction of users, and information location tools. The panel nonetheless rejected the argument that inducement liability is inherently incompatible with protection under the safe harbors.  Finally, the panel held that certain provisions of the injunction were too vague to meet the notice requirements of Fed. R. Civ. P. 65(d), and certain provisions were unduly burdensome.

Abbot Labs. v. Cordis Corp., Case No. 2012-1244 (Fed. Cir. March 11, 2013) (available here).

Cordis Corporation appealed from the decision of the United States District Court for the Eastern District of Virginia granting Abbott Laboratories’ motion to quash two subpoenas duces tecum issued pursuant to 35 U.S.C. § 24. The district court concluded that section 24 only empowers a district court to issue a subpoena for use in a “contested case,” and that contested cases are limited to those in which the regulations of the United States Patent and Trademark Office (“PTO”) authorize the parties to take depositions. Since the PTO does not provide for depositions in inter partes reexamination proceedings, such proceedings are not “contested cases” within the meaning of section 24, and subpoenas under section 24 are not available. The Federal Circuit affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, April 1, 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 :: January 9, 2012 :: The Stop Online Piracy Act (SOPA)

We will be discussing the proposed Stop Online Piracy Act (SOPA) during our weekly SoCal IP Institute meeting on Monday, January 9, 2012. A brief synopsis and several relevant articles and sites are presented below.

SOPA (attached) has been the subject of much commentary as of late.  The Electronic Frontier Foundation has an entire site devoted to SOPA.  Infographics discussing the substance of SOPA have been prepared by various sources.  Law professors have also weighed in on the SOPA debate.  On the other side of the debate, product manufacturers subject to counterfeiting and content producers have each supported SOPA.

In general, SOPA itself states that is intended “[t]o promote prosperity, creativity, entrepreneurship, and innovation by combating the theft of U.S. property, and for other purposes.”  Title 1, section 102 enables the Attorney General, at the request of a content holder, to request an order from a U.S. court to require internet service providers (DSL, Cable, FiOS, internet hosting sites and the like), internet search engines (Google, Bing, Yahoo and the like), internet advertising services (Google, Apple iAd, Yahoo and the like) and payment processors (banks, advertisers and the like) to take “technically feasible and reasonable measures” to stop users from accessing a “foreign” infringing site, to stop processing of payments directed to the operators of the site and to stop serving ads (and providing money) for the site.  Section 103 provides the ability for content holders to go directly to payment processors and internet advertising services in a DMCA-like take down procedure directed to cutting off funding for the site.

Other sections provide the internet service providers, internet search engines, payment processors and internet advertising services who comply with an order or a legitimate request with immunity to lawsuits by the allegedly infringing site.  Still other provisions provide that the effect of the law will be studied by the copyright office and that the Copyright Office will begin a study of “notorious” infringers in order to make recommendations to Congress.

Title 2 includes miscellaneous revisions to Title 17 and 18 of the U.S. Code pertaining to making copies of movies, for example, available before their theatrical release.  Title 2 also includes additional provisions related to counterfeit goods and unlawful use of trademarks by overseas entities.  Finally, Title 2 also appoints a new intellectual property attache to coordinate with foreign countries on appropriate enforcement of U.S. intellectual property rights.  These provisions are, generally, less-controversial than those in Title 1 of SOPA.

The law professors’ letter and the letter by several content producers referenced above provide a good primer on the two sides of the contentions provisions.  We will begin with these two sides of the issue in our discussion of SOPA on Monday, January 9, 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 Amanda Jones by 9 am Monday morning.

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.