SoCal IP Law Group

The SoCal IP Law Blog

Category Archives: Ownership

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 :: July 14, 2014 :: Liens on IP do not Create Federal Questions and Receivership Over Some George Clinton Recordings Affirmed

Our weekly SoCal IP Institute meeting on Monday, July 14, 2014 will be a discussion of one 4th Circuit case regarding federal subject matter jurisdiction for liens enforced on intellectual property and a 9th Circuit decision on the appointment of a receiver and that receiver’s rights over IP held by an individual. Brief synopses of the cases appear below.

Flying Pigs, LLC v. RRAJ Franchising, LLC, No. 13-2135 (4th Cir. July 1, 2014) (available here). Through a very convoluted set of steps including foreclosure on a series of renters, two bankruptcy proceedings, an overarching settlement agreement across several parties, and removal (twice) of proceedings from Lenoir County, North Carolina Superior Court to the Eastern District of North Carolina, Flying Pigs came to bring a lien-related proceeding in Superior Court.  Defendant RRAJ removed the case under “federal question” subject matter jurisdiction.  The district court denied Flying Pigs’ remand motion and granted RRAJ a dismissal with prejudice.

The 4th Circuit vacated the district court’s dismissal order, and returned the matter to the Superior Court.  Specifically, the 4th Circuit held that the matter did not raise a federal question, but instead arose under state law–essentially as a lawsuit to enforce a lien in part against the IP.

Hendricks & Lewis PLLC v. Clinton, No. 13-35010 (June 23, 2014) (available here).  Hendricks & Lewis PLLC represented George Clinton in a series of legal matters over the course of a number of years.  Mr. Clinton failed to pay for those services. The bill totaled over $3 million, but was reduced to just over $1.5 million in arbitration proceedings in which Mr. Clinton did not participate.  A year after the arbitration, Clinton sued Hendricks & Lewis for malpractice.  They, in turn, sought to enforce the arbitration award.  The district court appointed a receiver for Mr. Clinton’s assets and authorized the license or sale of the copyrights in order to cover the fee award.

The 9th Circuit held that under Washington law Clinton’s copyrights in the masters were subject to execution to satisfy judgments made against him. The panel also held that § 201(e) of the federal Copyright Act did not protect Clinton from the involuntary transfer of his copyrighted works. The court further held that under Washington law the district court did not abuse its discretion by appointing a receiver to manage or sell ownership of the copyrights. The court also held that Clinton may raise claims of fraud on the court and judicial estoppel for the first time on appeal, but concluded that both claims were meritless. Finally, the court held that Clinton failed to raise his preemption, Erie doctrine, and due process arguments before the district court, and, therefore, they would generally not be considered, and in any event they were without merit.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 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 :: June 16, 2014 :: Supreme Court on Indefiniteness and Copyright

Our weekly SoCal IP Institute meeting on Monday, June 16, 2014 will be a discussion of two Supreme Court cases.  The first deals with indefiniteness and the second deals with copyright ownership. Brief synopses of the cases appear below.

Nautilus, Inc. v. Biosig Instrum., Inc. 110 U.S.P.Q.2d 1688, 572 U.S.___  June 2, 2014) (available here). In Nautilus, the Supreme Court remanded to the Federal Circuit to determine whether claims to an exercise machine were indefinite under 35 U.S.C. §112,¶2. Procedurally, the District Court granted Nautilus’ summary judgment motion to dismiss on the basis of invalidity, but the Federal Circuit reversed saying the claim term at issue was not “insolubly ambiguous.”  In remanding, the Supreme Court stated that the “insolubly ambiguous” standard does not comport with the statute.  “To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty.’ ”  The ball is back in the CAFC’s court to clearly define a definiteness test.

Side-issue brought up in Nautilus: What are “hybrid” apparatus/method claims, and when are they invalid?

Petrella v. Metro-Goldwyn-Mayer, Inc. et al., S.Ct. No. 12-1315 (May 19, 2014) (available here).  The screenplay for the movie “Raging Bull,” written by Jack Petrella and Jake LaMotta, was copyrighted in 1963 and assigned to MGM.  The movie was released in 1980, and upon Petrella’s death, his rights reverted to his daughter, plaintiff here.  She renewed the copyright in 1991, becoming its sole owner.  In 1998 she threatened MGM with an infringement suit, and in 2009 she sued, claiming monetary and injunctive relief limited to the three years prior to the date the suit was filed.  The Ninth Circuit granted summary judgment to MGM based on laches.  The Supreme Court reversed on a 6-3 vote, holding that laches does not apply to copyright claims for damages brought within the copyright statute’s prescribed three-year window.  In extraordinary circumstances, however, laches might curtail some forms of equitable relief.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 16, 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 :: 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 :: 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 :: June 3, 2013 :: Copyright Sanctions and Mandatory Cross-Appeals

Our weekly SoCal IP Institute meeting on Monday, June 3, 2013 will be a discussion of one district court copyright sanctions case and a Federal Circuit decision regarding cross appeals of invalidity. Brief synopses of the cases appear below.

Ingenuity 13 LLC v. John Doe, Case No. 2:12-cv-8333-ODW (JCx) (C.D. Cal.  May 5, 2013) (available here).

This case has been quite popular in the legal press.  The outcome, thus far, is that the lawyers representing the plaintiffs in this case have been sanctioned with $81,319.72 in attorney’s fees and costs.  The facts, broadly speaking, are recited by Judge Wright:

Plaintiffs have outmaneuvered the legal system. They’ve discovered the nexus of antiquated copyright laws, paralyzing social stigma, and unaffordable defense costs. And they exploit this anomaly by accusing individuals of illegally downloading a single pornographic video. Then they offer to settle—for a sum calculated to be just below the cost of a bare-bones defense. For these individuals, resistance is futile; most reluctantly pay rather than have their names associated with illegally downloading porn. So now, copyright laws originally designed to
compensate starving artists allow, starving attorneys in this electronic-media era to plunder the citizenry.

Judge Wright issued an order to show cause why sanctions should not be entered against the plaintiff and plaintiff’s counsel.  He also sought for each of several named individuals including the principals of the plaintiff and of the plaintiff’s counsel appear before him at a hearing.  Only one counsel, Mr. Gibbs, appeared before him at that hearing.  Based upon all that the court was able to deduce, the plaintiffs, who appear to be the lawyers prosecuting the cases, maintained full control of the entire operation, stole the identity of a man in Minnesota to hold him out as the principal of the plaintiff, and filed numerous lawsuits based upon a scant internet investigation, then sought to settle the cases quickly.  Once the scheme was discovered, the plaintiffs then sought to deceive the court as to the true status of the cases, the investigation undertaken prior to an allegation of infringement, the ownership involvement of a number of lawyers, and of the actual ownership of the allegedly infringed works.

Based upon the court’s difficulty in obtaining true information regarding any of the facts of the matter, the court found that it was inadequately placed to issue a large, seven-figure sanction.  The court openly suspected that such a sanction would be avoided regardless.  Instead, the court awarded an attorney’s fees and costs sanction under its inherent authority in Rule 11 and passed all information that the court has obtained regarding the attorneys’ conduct on to the U.S. Attorney’s office for the Central District of California, to the IRS criminal division, and to all relevant state and federal bar associations to which any of the alleged plaintiffs belong or in which they had cases presently pending.

Lazare Kaplan Int’l., Inc. v. Photoscribe Technologies, Inc. et al. (Fed. Cir. 2012-1247 April 19, 2013) (available here).

In this case, Lazare Kaplan appealed from a summary judgment of invalidity after a prior judgment and appeal that those same claims were not infringed and not invalid.  After the original trial held in 2008, the jury returned a verdict that Photoscribe did not infringe claims 1 or 7 under the doctrine of equivalents. The district court then issued a final judgment that claims 1 and 7 were not invalid and not infringed, either literally or under the doctrine of equivalents. Lazare Kaplan filed a notice of appeal from the judgment of noninfringement. Photoscribe, however, did not file a notice of appeal from the judgment that the asserted claims were not invalid.  On remand after the appeal, the court entered summary judgment of invalidity.

Lazare Kaplan appealed this decision on the basis that Photoscribe had not reserved the issue of invalidity with a cross-appeal and, as a result, that issue was not addressable on remand.  The Federal Circuit found that Lazare Kaplan was correct and further than Fed. R. Civ. P. 60(b), which enables a party to seek relief from a final judgment, did not save Photoscribe’s issue.  Doing so would undermine the purpose of the mandatory cross-appeal in this case.  As a result, the case was remanded with instructions to vacate the judgment of invalidity.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 3, 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.