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organized by topic I. Patents A. Cases Phillips v. AWH Corp., Fed. Cir., No. 03-1269, 2/8/05 [BNA Feb. 11, 2005] Role of dictionaries in claim construction Plaintiff claimed that according to the broad dictionary definition of a term listed in his patent, defendant had infringed his patent. Defendant claimed that he term was limited by the specification in the patent, which had a more narrow definition. The case was highly anticipated to resolve the proper role of dictionaries in claim construction, but plaintiff‟s argument ultimately went to the merits and whether the lower decisions erred in limiting the claim terms to the embodiment in the specification (rather than allowing the claims to control). Junker v. Eddings, 396 F.3d 1359 (Fed. Cir. 2005), Fed. Cir., No. 04-1208, 2/8/05 [BNA Feb. 18, 2005] Ornamental features of design patents The court held that defendant failed in his motion for summary judgment to specifically assert additional design features as the basis for patent invalidity, and could not now raise those issues on appeal. It stated that it could not consider the invalidity of additional features of a catheter sheath design patent because plaintiff‟s infringement evidence at trial only asserted one ornamental feature, and the accused infringer did not raise other specific design features in arguing invalidity. Lisle Corp. v. A.J. Manufacturing, 398 F.3d 1306 (Fed. Cir. 2005), Fed. Cir., No. 04-1275, 2/11/05 [BNA Feb. 18, 2005] Public prior use, experimentation exception Evidence showed that the patented invention (a tool used in automobile repair) was freely distributed to outsiders and used by them for 30 months prior to prior to the application date, without any controls or confidentiality agreements. However, the court ruled that the patent was not invalid because there was evidence of experimental use of the invention. Spartan Corp. v. United States, 399 F.3d 1321 (Fed. Cir. 2005), Fed. Cir., No. 03-5169, 2/28/05 [BNA Feb. 18, 2005] On-sale bar to patent (35 U.S.C. § 102(b)) The district court ruled for defendant because the patented invention was offered for sale more than a year before the application filing date, thereby invalidating the patent, but this court reversed. Because the sonic device offered for sale to the U.S. Navy as part of a change in a procurement contract was not the same invention claimed in two asserted patents, no invalidating offer for sale was made for purposes of the first factor of the Supreme Court‟s Pfaff v. Wells test. The patented invention was not the subject of the commercial sale. Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005), Fed. Cir. No. 04-1234, 3/2/05 [BNA Mar. 11, 2005] Prior art to invalidate patent, abandonment, public use Eolas had the patent on a fundamental world wide web browser technology enabling the embedding of small interactive programs such as “plug-ins” into web documents. While the patent was pending, Microsoft adopted its own browser technology, prompting Eolas to sue for infringement. The court found that the district court erred in finding that Microsoft‟s first browser invention (DX 34) was abandoned under 35 U.S.C. § 102(g) when replaced by a later version (DX 37) and thus could not serve as an invalidating prior art under 35 U.S.C. § 102(b). The court also found that the court below erred in finding that Microsoft‟s demonstration of the browser to outside parties without a confidentiality agreement was not a public use under § 102(b). The district court further erred by linking the § 102(b) inquiry with the § 102(g) inquiry; the public use inquiry must be independent of that for abandonment. Finally, the court also ruled for Eolas in affirming the district court‟s judgment that Microsoft could be held liable under § 271(f) for infringing sales outside the U.S. of software code on its golden master disks; § 271‟s prohibition against shipment of “components” is not limited to physical machines. Schering-Plough Corp. v. Federal Trade Commission, 402 F.3d 1056 (11th Cir. 2005), 11th Cir., No. 04-10688, 3/8/05 [BNA Mar. 18, 2005] Patents, antitrust Plaintiff, manufacturer of a drug that treats people with low potassium, settled its patent infringement litigation against a generic competitor with terms that included unconditional payments by Schering in return for agreements to delay introduction of the generic products. The FTC had prohibited settlements where the generic either receives anything of value from the brand-name company, or defers its own research and development or sales. The court overturned the FTC‟s decision that a settlement of a patent infringement action between brand-name and generic drug companies violated federal antitrust law, and instead said that settlement provisions governing payments in return for deferred entry of generic products could not be the sole basis for violation of antitrust law. The court cited policy considerations for its decision, considering the cost of lawsuits, public problems associated with overcrowded court dockets, and private benefits of settlements. Moreover, substantial evidence did not support the FTC‟s conclusion that the Schering settlements constituted unfair methods of doing. Playtex Products Inc. v. Proctor & Gamble Co., 400 F.3d 901 (Fed. Cir. 2005), Fed. Cir., No. 04-1200, 3/7/05 [BNA Feb. 11, 2005] Claim construction, extrinsic evidence Playtex sued P&G for patent infringement when the latter designed a tampon applicator that was nearly identical, except that its finger grip area was continuously curved. The court ruled that a patent on a “substantially glattened” tampon applicator requires neither a perfectly flat surface, nor one that is flat within a manufacturing tolerance, but merely a materially flatter surfacethat the applicator‟s tubular portion. Pause Technology Inc. v. TiVo Inc., 131 Fed.Appx. 305 (Fed.Cir. 2005), Fed. Cir., No. 04- 1263, 3/14/05 [BNA Mar. 18, 2005] But mandate recalled in 401 F.3d 1290 (Fed. Cir. 2005) – can we still do anything with this case? Patents, appellate jurisdiction Plaintiff sued, alleging that TiVo‟s digital video recorder technology infringed plaintiff‟s patent. The district court judge entered a summary judgment of noninfringement for TiVo, but did not indicate the court‟s disposition of the invalidity counterclaim. Plaintiff appealed. The court ruled that a summary judgment ruling of noninfringement that does not dispose of the defendant‟s counterclaim of patent invalidity is not a final decision appealable to the Federal Circuit under 28 U.S.C. § 1295(a)(1). SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005), Fed. Cir., No. 03-1285, 4/8/05 [BNA Apr. 15, 2005] Invalidity for inherent anticipation The court ruled that a chemical compound claimed in the antidepressant Paxil is inherently anticipated by a prior art patent because it naturally results from the production of another form of the compound as taught in the prior art reference. Merc-Exchange LLC v. eBay Inc., 401 F.3d 1323 (Fed. Cir. 2005), Fed. Cir., No. 03-1600, 3/16/05 [BNA Mar. 25, 2005] Infringement, invalidity for anticipation, obviousness Plaintiff sued eBay and its subsidiary Half.com for infringing its patents on e-commerce technology. The court issued a mixed ruling as to the validity and infringement of three patents against the eBay and Half.com online auction websites. It affirmed that one patent was infringed and not invalid for anticipation or obviousness, but it reversed the judgment holding eBay liable for inducing another company to infringe. It reversed a ruling that a second patent was not invalid for anticipation and vacated a ruling that a third patent failed to meet the written description requirement. Furthermore, it noted that the district court‟s concern over business-method patents and their validity was not adequate justification for denying the plaintiff a permanent injunction. Medrad Inc. v. MRA Devices Corp., 401 F.3d 1313 (Fed. Cir. 2005), Fed. Cir., No. 04- 1134, 3/16/05 [BNA Mar. 25, 2005] Interpretation of terms in patent claims Affirming a summary judgment invalidating a patent on an MRI system as anticipated by a prior art reference, the court ruled that a particular term used in one patent need not have the same meaning when used in an entirely separate patent. The court rejected the patent holder‟s reliance on an interpretation of the term “substantially uniform” in another Federal Circuit ruling involving a different kind of patent. It stressed that the manner in which a term is used in different patents may dictate differing definitions for the same claim term. ASM America Inc. v. Genus Inc., 401 F.3d 1340 (Fed. Cir. 2005), Fed. Cir., No. 04-1211, 3/16/05 [BNA Mar. 25, 2005] Interpretation of terms in patent claims The court ruled that the disputed claim terms “reaction space” and “evacuate” in two patents on a method of layering materials in a semiconductor device were properly construed to require the sucking out of gases from a certain section of the device with a vacuum pump. Affirming the claim construction and non-infringement ruling, the court rejected the patent holder‟s contention that the terms should be construed broadly to encompass the accused device‟s use of inert gases to push gases out of an unrestricted area. V-Formation Inc. v. Benetton Group SpA, 401 F.3d 1307 (Fed. Cir. 2005), Fed. Cir., No. 03-1408, 3/15/05 [BNA Mar. 25, 2005] Claim construction The court ruled that the citation to a prior art reference on the face of a patent on an in- line roller skate allows that reference to be used as intrinsic evidence in claim construction. In affirming, the court found that the district court properly considered the prior art patent in construing the limitation requiring a frame with “a plurality of fasteners for releasably attaching” the in-line wheels to the skate boot. Since the prior art reference and the specification are intrinsic evidence showing that rivets cannot be “releasably attaching” fasteners, the accused roller skates cannot be literally infringing, the court concluded. Merck KGaA v. Integra Lifesciences I Ltd., 125 S.Ct. 2372 (2005), No. 03-1237 [BNA April 22, 2005] Experimental use defense Anti-cancer research by Merck included tests involving RGD peptides patented by Integra. Integra filed suit, alleging that the use of their peptides constituted patent infringement. On appeal to the Supreme Court, Merck contends that the infringement exemption in 35 U.S.C. § 271(e)(1) for research and development [to allow generic drug companies to use patented inventions while preparing to submit generic drug applications for FDA approval] should apply even though Merck did not object to jury instructions given by the District Court on the exemption issue. Also key to this dispute is whether the exemption applies only to research into the safety of a drug, or whether it also applies to experiments regarding the effectiveness of a drug. The court vacated and remanded, holding that exemption set forth by patent statute's safe harbor provision includes pre- clinical studies of patented compounds that are appropriate for submission to the FDA in the regulatory process; exemption is not limited to only preclinical data pertaining to safety of drug in humans. Lawman Armor Corp. v. Simon, 2005 WL 1176973 (E.D. Mich. 2005), No. 04-CV-72260, 3/29/2005 [BNA Apr. 22, 2005] Abandonment of patent application Lawman sued for a declaratory judgment that an applicant‟s patent for a anti-theft brake lock device was invalid and unenforceable. The patent applicant had abandoned his application for three years and renewed interest in it only after he saw Lawman‟s similar anti-theft brake lock device on the market. The court viewed the applicant‟s failure to file a requested response to the PTO‟s office action was a deliberate decision to abandon the application, and ruled that patent applicant‟s conduct was not “unintentional” abandonment for purposes of 27 C.F.R. § 1.137(b). B. Claim construction 1. Claimed composed bagging machine is not limited to structure with "flutes" Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325 (Fed. Cir., 2004) A patent claiming a compost bagging machine with a "means . . . for creating air channels" is not limited to structure that includes both a perforated pipe and V-shaped flutes because the flutes are not essential based on the claims and the specification, the U.S. Court of Appeals for the Federal Circuit ruled Dec. 14 Reversing a non- infringement ruling, the court explained that although the specification in most places describes the invention with both flutes and perforated pipe as a preferred embodiment, one part of the specification does not require flutes. Quoting Serrano v. Telulor Corp., it pointed out that " '[d]isclosed structure includes that which is described in the specification, including any alternative structures identified,' even when the most frequently described structure and embodiment are different." However, in a dissenting opinion, Judge Pauline Newman complained that "[a] device without, flute-created air channels was not described, is not presented as the applicant's invention, is not illustrated in any drawing." C. Validity 1. Three-grip handle barbell in range of prior art lacks evidence to rebut obviousness Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir., 2004) A patent claiming a barbell plate with three elongated holes as grips is invalid for obviousness because it is within it is within the range of prior art plates with two and four elongated handles and there is no evidence to rebut the applicable presumption three elongated handles and there is no evidence to rebut the applicable presumption of obviousness. Affirming an obviousness ruling, the court clarified that an invention is not per se obvious simply because it falls within a range disclosed by the prior art, but that a presumption of obviousness applies in such cases. The patentee could not rebut the presumption of obviousness since it could not show that the prior art taught away from the claimed invention or that there are new and unexpected results compared to the prior art, the court reasoned. 2. Gene "comprising" nucleotide sequence is anticipated by prior art starting plasmid. In re Crish, 393 F.3d 1253 (Fed. Cir., 2004) A patent application for purified DNA molecules having promoter activity for the human involicrin gene was anticipated under § 102(b) of the Patent Act because a prior art reference disclosing plasmid starting materials necessarily contained the gene of interest, the U.S. Court of Appeals for the Federal Circuit ruled Dec. 21. Affirming an anticipation rejection by the Board of Patent Appeals and Interferences, the court agreed that while the plasmids in the prior art publication were not sequenced, they possessed the same DNA sequence as the oligonucleotides claimed by the patent applicants. “Just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel,” the court said, pointing out that the claimed promoter region was not new. D. USPTO 1. PTO report to Congress proposes changes in patent reexaminations The Patent and Trademark Office in a Dec. 17 report to Congress proposed amending the Patent Act in three areas to improve inter partes reexamination of issued patents. The report, mandated by the 1999 law that first established inter partes patent reviews, recommended (1) clarifying the inter partes reexamination estoppel provisions; (2) permitting the requester of an inter partes reexamination additional opportunities to provide input as to office actions; and (3) extending the requester's statutory period for comment after the patent owner responds to an office action, or permitting the PTO to set the period for comment by rule. E. BlackBerry ruling is vacated due to claim construction, but upheld on infringement NTP, Inc. v. Research in Motion, Ltd., 392 F.3d 1336 (Fed. Cir., 2004) A district court's ruling was correct as to infringement by the BlackBerry e-mail device but flawed as to the construction of one claim limitation of the Patents in suit, the U.S. Court of Appeals for the Federal Circuit ruled Dec. 14 In a mixed ruling, the court concluded that while one component of the accused wireless system was located in Canada, the district court "correctly found infringement under 35 U.S.C. $ 271(a)" because "the location of the beneficial use and function of the whole operable system is the United States." However, the appellate court vacated the injunction and damages award due to the district court's flawed reading of the "originating processor" limitation in three of the patents. If it is established on remand "that the erroneous claim construction prejudiced the jury's verdict as to the affected claims, the district court will have to set aside the verdict as to those claims," Judge Richard Linn wrote. F. General scientific doubt regarding "cold fusion" supports rejection of application In re Dash, 118 Fed. Appx. 488 (Fed. Cir., 2004) Considerable doubt in the general scientific community regarding the utility of "cold fusion" as an efficient producer of energy offered substantial support for the rejection of a cold fusion patent application on grounds of nonenablement and nonutility, the U.S. Court of Appeals for the Federal Circuit ruled in a Dec. l0 decision designated as nonprecedential. Affirming a decision of the Board of Patent Appeals and Interferences, the court rejected the argument that the evidence was not a legitimate basis for rejection because it did not specifically address the method described in the application and was not from peer reviewed journals. The court said that the evidence offered by the examiner might not be the best conceivable kind of evidence, but that that did not mean that it could not be considered. G. Motivation to combine need not be based on preferred alternatives in prior art (In re Fulton, Fed. Cir., No. 04-1267, 12/2/04). A finding that a patent was obvious based on a motivation to combine need not be supported by a showing that a particular combination of references in the prior art is preferred over other alternatives, the U.S. Court of Appeals for the Federal Circuit Ruled Dec. 2. Affirming an obviousness rejection by the Board of Patent Appeals and Interferences, the court rejected the patentee's argument that the board failed to show that the hexagonal surfaces claimed in a shoe application were preferred over other alternatives in the prior art. “Our case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention,” but instead considers whether there is something in the prior art as a whole to suggest the desirability of making the combination, it stressed, citing In re Beattie. H. Lack of expert infringement testimony dooms case involving complex art Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361 (Fed. Cir., 2004) A patentee with a complex patent for fabricating electrodes for plasma arc torches failed to carry its burden of proving infringement by relying on an admitted non- expert's testimony to rebut expert testimony negating infringement, the U.S. Court of Appeals for the Federal Circuit ruled Dec. 6. Reversing an infringement ruling, the court declined to create a per se rule requiring expert testimony to prove infringement when the art is complex. However, in cases where the art is complex and "the accused infringer offers testimony negating infringement, the patentee cannot satisfy its burden of proof by relying only on testimony from those are admittedly not expert in the field.” I. ANDAS FDA acted reasonably in delaying ANDA certification under change in circumstances Mylan Labs., Inc. v. Thompson, 363 U.S. App. D.C. 440 (D.C. Cir., 2004) The Food and Drug Administration's delaying of the effective date of the effective approval hat6 of an abbreviated new drug application was a reasonable solution when confronted with a conflict resulting from the operation of the Hatch- Waxman Amendments to and the pediatric exclusivity provision of the Food, Drug, and Cosmetic Act, and the remedies provision of the Patent Act, the U.S. Court of Appeals for the District of Columbia Circuit ruled Nov. 30. Affirming a summary judgment in favor of the FDA, the court determined that the Agency's decision was entitled to deference under Chevron U.S.A. Inc, v. Natural Resources Defense Council lnc. The court went on to conclude that the FDA's delaying of the effective date of the ANDA approval constituted a reasonable response to ambiguities resulting from operation of the statutes. J. Need for invalidity declaration disappears with patent's expiration DePalma v. Nike, Inc., 341 F. Supp. 2d 178 (D.N.Y., 2004) The expiration of a patent in suit removes any “real and immediate" need for judicial attention to an infringement defendant's counterclaim for a declaratory judgment of patent invalidity, the U.S. District Court for the Northern District of New York ruled Oct. 28. Dismissing the invalidity counterclaim, the court reasoned that the need required to adjudicate an invalidity counterclaim under the Federal Circuit's Bp Chemicals ruling lasted for the life of the patent. However, now that, the patent has expired, "there is no present activity on the part of the defendants which could constitute infringement" and "no need for a declaration regarding the validity of the patent to enable them to make decisions regarding future activity," the court wrote. II. Copyrights Shady Records Inc. v. Source Enterprises Inc., 2005 WL 14920 (S.D.N.Y. 2005), S.D.N.Y., No. 03 Civ. 9944 (GEL), 1/3/05 [BNA Feb. 4, 2005] News reporting, fair use defense Defendant Source Enterprises‟ publication of lyrics and posting of digital recordings of early unpublished songs by rap artist Eminem on its music news website may be protected under the fair use defense to copyright infringement. Source Enterprises claimed that their use of the works constituted news reporting and that such use in order to demonstrate Eminem‟s racist and sexist attitudes was “transformative.” The court agreed that a fair use defense might be valid, but it required a determination on the facts, and declined to resolve the issues on summary judgment. Broadcast Music Inc. v. Roger Miller Music Inc., 396 F.3d 762 (6th Cir. 2005), 6th Cir., No. 02-5766, 1/28/05 [BNA Feb. 11, 2005] Survivors’ interests in deceased’s copyright The Sixth Circuit held that if any author dies before the copyright to his/her work is renewed, the surviving spouse gets 50% of the renewal copyright interests, with any surviving children sharing the other 50% on an equal basis. Rejecting arguments for equal sharing by the surviving spouse and children, the court said that a disproportionate scheme was more consistent with the Copyright Act and the history and purpose of its renewal provisions. The court found particularly instructive Section 304(c), on the right to terminate an interest in the renewal of a copyright, which gives 50% of the right to the surviving spouse. Taylor Corp. v. Four Seasons Greetings LLC, 8th Cir., No. 04-1088, 4/1//05 [BNA Apr. 22, 2005] Copyright infringement, standard of review in finding substantial similarity An officer of Creative Card Co. left the company and formed Four Seasons, hiring away three of the four artists from his former company who had created the six designs at issue in this suit. Taylor Corp. purchased Creative Card‟s copyrights in many designs, including the ones at issue here. Rejecting the reasoning of the 2nd Circuit for using a de novo standard in reviewing whether there was substantial similarity, this court subjected the determination to a “clearly erroneous” standard of review and found no clear error in the district court‟s ruling that the Four Seasons Bonazoli d/b/a Bee-hive Kitchenware v. R.S.V.P. International Inc., 353 F.Supp.2d 218 (D.R.I. 2005), D.R.I., No. 03-0514-S, 1/18/05 [BNA Feb. 11, 2005] Design copyright infringement, whether conceptually separable from functionality of design The court found that the design of a set of measuring spoons shaped like a Valentine‟s heart and arrow was conceptually inseparable from the functionality of the spoons as a useful article. The design was clearly adapted to be a set of measuring spoons; everything about their size and shape was designed to measure material accurately and to scoop effectively. American Library Association v. Federal Communications Commission, 406 F.3d 689 (D.C. Cir. 2005), D.C. Cir., No. 04-1037, oral argument 2/22/05 [BNA Feb. 25, 2005] Protecting copyrights, Digital Millennium Copyright Act In Nov. 2003, the FCC implemented an anti-piracy regulation without specific marching orders from Congress, relying on its “ancillary” jurisdiction rooted in the Communications Act. The regulation could radically alter the design of consumer electronics, requiring devices to restrict the degree to which consumers may copy and distribute digitally broadcast programs, but the ALA complained that consumers would have to bear the heavy cost of implementing the “broadcast flag system.” Among the IP implications raised by plaintiff included the proper role of FCC in protecting copyrights, and whether the DMCA is consisted with the broadcast flag regulation. The court held that (1) the ALA demonstrated that there was substantial probability that concrete and particularized interests of member university library would have been harmed by order, and (2) the FCC acted in excess of its statutory authority in promulgating regulations regarding broadcast flag technology. Ross, Rovins & Oehmke v. Lexis/Nexis, 348 F.Supp.2d 845 (E.D. Mich. 2004), E.D. Mich., No. 03-74474, 1/31/05 [BNA Feb. 25, 2005] Copyrightability of templates for automated completion of legal forms Lexis contracted with plaintiff, d/b/a LawMode, to create templates for the automated completion of legal forms which would prompt users for information through a series of dialogue boxes and then generate a signature-ready document. LawMode created hundreds of automated legal forms for Lexis, but Lexis terminated the agreement and began offering its own product. LawMode sued for, inter alia, copyright infringement. The court found that the automated forms were not copyrightable because they had lacked sufficient originality and were too simple and functional; dialogue boxes are essentially blank forms, which are not copyrightable. O’Rourke v. Smithsonian Institution Press, 399 F.3d 113 (2d Cir. 2005), 2d Cir., No. 04- 01510cv, 2/16/05 [BNA Feb. 25, 2005] Protecting copyrights, jurisdiction The court held that a copyright infringement suit against the Smithsonian is an action against “the United States” that invokes the exclusive jurisdiction of the Court of Federal Claims pursuant to 28 U.S.C. § 1498(b). The court agreed with the district court, who said that “the United States” in the statute should be interpreted broadly to include all governmental entities. The district court‟s judgment dismissing the case for lack of subject matter jurisdiction was affirmed. Palladium Music Inc. v. EatSleep-Music Inc., 398 F.3d 1193 (10th Cir. 2005), 10th Cir., No. 04-6061, 2/14/05 [BNA Feb. 25, 2005] Derivative works Palladium produces karaoke music tracks, which are prepared from scratch with musicians who reproduce the original as closely as possible. Palladium did not obtain authorization from the copyright owners to prepare these works or comply with the requirements of any statutory license. When it discovered that defendant was distributing its karaoke recordings online, it brought a copyright infringement suit. The court rejected Palladium‟s argument that the karaoke recordings were original, rather than derivative, works, and ruled that even though the karaoke recordings were done from scratch without copying the original recordings, they are considered derivative works of copyrighted works. As such, in order to prepare them, Palladium must obtain authorization from the copyright owners to prepare these works or comply with the statutory licensing procedure set forth in 17 U.S.C. § 115. Tecmo Inc. v. Greiling, N.D. Ill., No. 1:05cv00394, filed 1/21/05 [BNA Feb. 25, 2005] Copyright infringement, Digital Millennium Copyright Act, trademark infringement Defendant developed a tool that allows users to create new ''skins" for video game characters, including nude skins. Plaintiff, a publisher of video games, refused to support the tool and sued for alleged violations of reproduction, distribution, and derivative work rights, as well as copyright infringement, trafficking circumvention technology in violation of the DMCA, and using modified characters in violation of the Lanham Act. The court ruled that a software tool used to create new "skins'' for video game characters infringes the copyrights and trademarks in the original games. Marvel Entertainment Inc. v. NCSoft Corp., C.D. Cal., No. 04cv9253, briefs filed 2/14/05 [BNA Feb. 25, 2005] Copyright infringement of characters, trademark infringement Marvel sued for both direct and indirect copyright and trademark infringement, alleging that defendant‟s video game "City of Heroes" unlawfully encourages users to create infringing variations of Marvel's action heroes by suggesting attributes that closely resemble those of famous characters. Marvel argued that the number of infringing heroes a user may create is limited only by the user‟s familiarity with Marvel‟s characters. In this suit the plaintiffs go after the toolkit for imagineering potentially infringing characters, rather than the knock-offs themselves. The court ruled that the imaginary names that users conjure up for characters they create in a video game do not infringe Marvel‟s trademarks in its comic book heroes. While the court dismissed claims of secondary liability for trademark infringement, Marvel‟s claims for direct and indirect copyright infringement survived. Open Source Yoga Unity v. Choudhury, N.S. Cal., No. C 03-3182 PJH, 4/1/05 [BNA Apr. 8, 2005] Copyrightable compilations The court ruled that a sequence of yoga poses may be protectable in the same manner as other copyrightable compilations. A sequence of yoga poses could be copyrightable if the trier of fact determines that a sufficient number of individual yoga poses were arranged in a sufficiently creative manner. ATC Distribution Group Inc. v. Whatever It Takes Transmissions & Parts Inc., 402 F.3d 700 (6th Cir. 2005), 6th Cir., No. 03-6505, 3/30/05 [BNA Apr. 8, 2005] Copyrighting a number scheme, trade secret – ready availability When defendant left ATC, his new company produced a catalogue almost identical to his former employer‟s catalogue. The court ruled that a scheme for assigning catalogue numbers to automobile transmission parts does not reflect sufficient originality to be protectable by copyright. The court said that the numbering system is also not copyrightable under the merger doctrine because it merely reflects the sole reasonable way to express certain ideas for organizing part numbers. The court also said that ATC‟s consumer list could not be protectable as a trade secret because it failed the statutory requirement that a trade secret not be readily ascertainable by other means. Martha Graham School and Dance Foundation Inc. v. Martha Graham Cener for Contemporary Dance Inc., 380 F. 3d 624 (2d Cir. 2004) [BNA Apr. 8, 2005] Works for hire Plaintiffs, a choreographer's sole beneficiary, sued defendants, a dance school and a dance center, disputing ownership of the copyrights to 70 dances created by the choreographer. The court below ruled that most of the copyrights belonged to defendants and that only one copyright belonged to the beneficiary. Of the 45 dances to which defendants were entitled to a declaration of ownership of copyright, 18 belonged to the center by assignment, and the other 27 belonged to the center because they were works for hire. This court affirmed in part, reversed in part, vacated in part and remanded. Its decisions were based largely on the determination of whether Graham‟s works qualified as works for hire. Faulkner v. Mindscape Inc., 2d Cir., No. 04-0263-cv, 3/4/05 [BNA Mar. 18, 2005] Revisions of copyrighted works Plaintiffs are freelance photographers who own copyrights in images that were published in National Geographic magazine. When National Geographic began producing its magazine on a CD-ROM collection, the photographers brought suit alleging unauthorized use of their works in the CD-ROM. The court ruled that a CD-ROM collection of National Geographic magazine is a revision that the publisher, as the owner of a collected work, has a right to produce under the Copyright Act. Distinguishing this case from N.Y. Times v. Tasini, where in the electronic compilation the copyrighted works were taken out of their original context, here the court said that the CD-ROM presented to the user exact replicas of the pages as they had originally been published. Capitol Records Inc. v. Naxos of America Inc., 4 N.Y.3d 540, 2005 WL 756591 (N.Y. 2005), 2005 N.Y. Slip. Op. 02570, No. 30, 4/5/05 [BNA Apr. 15, 2005] NY common law copyrights Plaintiff claimed copyright interest in several 1930s recordings of classical music performances which were originally made on shellac records produced in England by EMI Records‟ predecessor. EMI licensed U.S. distribution of the recordings to plaintiff, EMI‟s American subsidiary. Both plaintiff and defendant began remastering the recordings into CD format. The district court granted defendant‟s motion to dismiss for failure to state a claim because plaintiff‟s U.K. copyrights in the original recordings had expired. The NY Court of Appeals ruled in favor of plaintiff that the common law of NY extends copyright protection to pre-1972 foreign-made sound recordings that are not subject to copyright protection under the U.S. Copyright Act and that have entered the public domain under the law of the country in which they were created. NY common law may protect until federal law preempts it. The court also ruled that under NY common law, a claim of copyright infringement is not duplicated by a claim for unfair competition; copyright infringement is distinguishable because it requires a showing that the defendant engaged in marketplace competition or similar actions designed for commercial benefit. Attig v. DRG Inc., 2005 WL 730681 (E.D. Pa. 2005), E.D. Pa., No. 04-CV-3740, 3/30/05 [BNA Apr. 15, 2005] Licensing Defendant and others hired plaintiff to refresh the appearance of two existing websites. There was no formal agreement, but plaintiff did spell out his understanding of the job in a letter to defendants, which contained no discussion about who owned what rights in the work he created. When plaintiff could not collect money from defendants for web hosting fees, he registered for the copyright in each website and sued for infringement. The court ruled in favor of defendants that a client who pays a website developer to revamp its site enjoys an implied, nonexclusive license to use that content where an intent to permit use is evident from the informal dealings between the parties. Krause d/b/a Special-T Software v. Titleserv Inc., 402 F.3d 119 (2d Cir. 2005), 2d Cir., No. 03-9303, 3/21/05 [BNA Mar. 25, 2005] Affirmative defense to copyright infringement Plaintiff is a former employee of defendant‟s who used to create computer programs designed to enable tracking that status of client requests. When he left the company, he took with him source codes for two programs. Left without the source codes, defendant reverse engineered Krause‟s programs to add new client information, and Krause sued for copyright infringement. The court ruled that defendant‟s modifications to copyrighted computer programs left with the company by its former programmer were permissible under an affirmative defense to infringement. The court said that Section 117(a) of the Copyright Act allowed the company to update and add new client information to the programs and the modifications were essential to the company‟s use of the program on its machines. Incredible Technologies Inc. v. Virtual Technologies Inc. d/b/a Global VR, 400 F.3d 1007 (7th Cir.), 7th Cir., No. 03-3785, 3/15/05 [BNA Mar. 25, 2005] Preliminary injunction, copyrightability, trade dress infringement Plaintiff is the manufacturer of Golden Tee video game; defendant, recognizing the popularity of plaintiff‟s game, created a competing product, PGA Tour Golf video game, with the same control features. Plaintiff brought suit for copyright infringement and sought a preliminary injunction, but the district court ruled for defendant, saying plaintiff had failed to show a likelihood of success on the merits because all of the copied elements were functional rather than creative, as required by Atari v. North American Phillips Consumer Electronics Corp. The court ruled that the district court did not create a new “best explanation” exception to copyright infringement in ruling that the maker of a golf video game could not demonstrate a likelihood of success on the merits of an infringement claim against the maker of a similar game. Rather, the district court had merely found certain characteristics of the game that had been copied were not sufficiently creative to merit protection except against virtually identical copying. On the trade dress infringement claim, the court cited the extensive differences in the appearances to find that the district court correctly found no likelihood of success on the merits. A. DMCA: Court rejects recording industry subpoenas of ISPs aimed at getting data on customers Charter Communs.,Inc.,Subpoena Enforcement Matter v. Charter Communs., Inc., 393 F.3d 771 (8th Cir., 2005) A provision of the Digital Millennium Copyright Act authorizing subpoenas ordering Internet service providers to turn over subscriber information to copyright holders who believe that users are engaging in infringing activity does not apply to an ISP that merely acts as a conduit and does not maintain a server that can be used to store allegedly infringing material. Overturning a district court order enforcing such subpoenas by recording companies, the court explicitly adopted the reasoning and conclusions of the U.S. Court of Appeals for the District of Columbia Circuit as set forth in Recording Industry Association of America v. Verizon Internet Services Inc. The Eighth Circuit ruled that the role of the Internet service providers was limited to serving as a “conduit in the transfer of files through its network.” B. Copyrightability 1. Allegation that works are obscene cannot be resolved on summary judgment Nova Prods. v. Kisma Video, Inc., 2004 U.S. Dist. LEXIS 24171 (D.N.Y., 2004) A claim that allegedly infringed works are obscene (and thus not protectable under federal copyright law) raises a material issue of fact that cannot be resolved at the summary judgment stage. Judge Harold Baer Jr. said that whether the works were obscene was a question of fact. The court also said that it was not clear that a finding of obscenity would constitute a complete defense to the claims of infringement. C. Infringement 1. 5th circuit affirms non infringement judgment in "back that ass up" dispute Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 357 (5th Cir., 2004) A jury verdict of non-infringement in a dispute between two rap music recording companies was not tainted by improper jury instructions regarding substantial similarity and other issues, the U.S. Court of Appeals for the Fifth Circuit ruled Dec. 17 The court also upheld a number of rulings by the trial court on evidentiary matters and an award of attorney's fees. D. Internet 1. Linking plus modifications to linked -to site may suffice to trigger infringement liability Batesville Servs. v. Funeral Depot, Inc., 2004 U.S. Dist. LEXIS 24336 (D. Ind., 2004) The general principle that mere linking to another Web site does not result in copyright infringement may not apply where the defendant also has "extensive involvement" in the linked-to site's content. While the third-party owner of the linked-to site may have an implied license to display the disputed material, the defendant may not be able to hide behind that permission where it has essentially seized control over how the copyrighted content is displayed on the linked-to site, the court ruled in denying the defendant's motion for summary judgment. E. State Law 1. County real estate data are public records, accessible for use without royalties Microdecisions, Inc. v. Skinner, 2003 U.S. Dist. LEXIS 14846 (D. Fla., 2003) Web-based company can obtain and use county records in its commercial compilations of real estate data without paying royalties to the county. Reversing a judgment below for the county property appraiser who created the records, and ordering a summary judgment for the data compiler, the court said Florida has a long- standing legal tradition of permitting access to its public records, and that no state statute authorizes a county property appraiser to hold a copyright in such data. The court discounted a Second Circuit ruling to the contrary. F. Errors in registering photo collections were inadvertent and not material Cipes v. Mikasa, Inc., 346 F. Supp. 2d 371 (D. Mass., 2004) The erroneous registration of photographs as collections, when some of the images were published in different years, and the erroneous duplication of some photographs in registrations were inadvertent and immaterial errors, and the registrations were not invalidated as a result, the U.S. District Court for the District of Massachusetts ruled Nov. 30. Denying motions for summary judgment by the accused infringer, the court also ruled that the unauthorized publication of some photographs by the defendant did not invalidate the registration of those photographs as unpublished works. G. Mere "economic influence" over infringer doesn't constitute contributory infringement Perfect 10, Inc. v. Visa Int'l Serv. Ass'n, 2004 U.S. Dist. LEXIS 27477 (D. Cal., 2004) The ability of credit card companies to exert economic influence over merchants who use their payment systems to peddle infringing- images on the Web is an insufficient basis to establish secondary –liability under copyright law, the U.S. District Court for the Northern District of California ruled Dec. 3 in an opinion designated as unpublished The latest ruling in the case once again rejected a theory of liability that could have turned Visa and MasterCard into the copyright police of the Internet. Along the way, the court also rejected the publisher's claims of contributory trademark infringement, for largely the same reasons. H. DMCA's requirement of “good faith belief” that use is infringing is a subjective standard Rossi v. Motion Picture Ass'n of Am., Inc., 391 F.3d 1000 (9th Cir., 2004) The "good faith belief" of infringement required under the Digital Millennium Copyright Act to justify "take down" of an offending Web site is a subjective standard, the U.S. Court of Appeals for the Ninth Circuit held as a matter of first impression Dec. 1. Affirming a summary judgment against a Web site operator who challenged the shutdown of its movie related site, the court rejected the contention that the association representing the copyright owners was required to conduct an objective investigation to determine whether the site provided a source for the downloading of their copyrighted movies. Statements on Web site such as "Join to download full length movies online now!" were sufficient to lead an Internet user to believe that copies of movies could be downloaded at the site, the court said. I. Part numbers assigned to fasteners are not entitled to copyright protection Southco, Inc. v. Kanebridge Corp., 390 F.3d 276 (3d Cir., 2004) A screw fastener manufacturer is not entitled to copyright protection for the part numbers it assigns to its various products, the en banc U.S. Court of Appeals for the Third Circuit decided Dec' 3. Affirming a district court ruling against the manufacturer, the court explained that regardless of whether the manufacturer's numbering system itself is eligible for copyright protection - an issue not before the court - the actual part numbers are merely a mechanical application of the previously developed system and lack sufficient originality to warrant protection. J. DMCA's Section 1202(b) protection is not violated unless information is removed from work Schiffer Publ'g, Ltd. v. Chronicle Books, LLC, 350 F. Supp. 2d 613 (D. Pa., 2004) For liability under the Digital Millennium Copyright Act's Section 1202@) prohibition against the removal or alteration of copyright management information, a defendant must have removed the information from the body of, or area around, the work itself, the U.S. District Court for the Eastern District of Pennsylvania ruled Nov. 12 Entering judgment for a defendant accused of using the plaintiff's photographs in its own book, the court noted the plaintiff's photographs were not accompanied by individual notices that were removed by the defendant. The court also held that, by merely rearranging the plaintiff's photographs so as not to call attention to the copying, the defendant did not demonstrate the kind of knowledge and intent required for liability under DMCA's Section 1202(a) prohibition against falsifying copyright management information. K. DAMAGES: Failure to establish causal link between infringement, profits blocks profits recovery Mager v. Brand New Sch., 2004 U.S. Dist. LEXIS 21686 (D.N.Y., 2004) An artist whose stylized eyeball design was used by the defendants without his permission in the title sequence of a television program is barred as a matter of law from collecting the defendants' profits from the program, absent a nexus between the defendants' profits and their use of the design, the U.S. District Court for the Southern District of New York ruled Oct. 28. Applying the nexus requirement set forth by the Second Circuit in Davis v. Gap Inc., the court granted a summary judgment dismissing the plaintiff's claim for the infringers' profits. "The copyright laws do not allow speculative recovery," the court said. L. FCC defends authority to implement broadcast flag in D.C. Circuit brief (American Library Association v. Federal Communications Commission, D.C. Cir., No. 04-1037, response brief filed 11/3/04) The Federal Communications Commission has jurisdiction to implement the "broadcast flag" system for protecting digital TV broadcasts, the agency argued in a brief filed Nov. 3 in the U.S. Court of Appeals for the D.C. Circuit. The FCC's jurisdiction over radio and wire communication extends not only to the signals themselves, but also to the equipment used to receive those transmissions, the agency argued. III. Tradesecrets Coca-Cola Co. v. Purdy, 2005 WL 212797 (D. Minn. 2005), D. Minn., No. 02-1782 ADM/JGL, 1/28/05 [BNA Feb. 11, 2005] Anticybersquatting Consumer Protection Act, domain names, degree of consumer care factor Alleging violation of the Anticybersquatting Consumer Protection Act, multiple trademark holders sued Purdy, an anti-abortionist who registered several website domain names that incorporated marks owned by Coca-Cola Co., and Washingtonpost.Newsweek Interactive Co, and associated them with anti-abortion statements, images, and apparel reflecting Purdy‟s stance. The court granted summary judgment to the trademark holders, finding in their favor the factors for infringement. Of particular noteworthiness is the court‟s finding on the factor of degree of consumer care, that “the quick and effortless nature of „surfing‟ the Internet makes it unlikely that consumers can avoid confusion through the exercise of due care.” March Madness Athletic Association v. Netfire Inc., 120 Fed.Appx. 540 (5th Cir. 2005), 5th Cir., No. 03-11069, 1/24/05 [BNA Feb. 11, 2005] Awarding damages for internet domain trademark infringement, Anticybersquatting Consumer Protection Act The IHSA and NCAA (together, March Madness Athletic Association) sued defendant for registering and using in bad faith the domain name marchmadness.com in 1996. The court ruled that the term “March Madness” is protectable, but because the defendant‟s registration and use of the domain name occurred after the Anticybersquatting Consumer Protection Act was enacted in Nov. 1999, damages and attorneys‟ fees were not warranted. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (Fed. Cir. 2005), Fed. Cir., No. 04-1042, 2/9/05 [BNA Feb. 18, 2005] Famousness of a mark for determining likelihood of confusion in trademark infringement The court denied Palm Bay‟s registration of “Veuve Royale” as a mark for its sparkling wine because it would likely cause confusion with defendant‟s marks for its champagne. The court said that the standard for judging the famousness of a mark for likelihood of confusion purposes is not as rigorous as the standard used for trademark dilution analysis. While the dilution standard is an either/or standard, fame for confusion purposes varies along a spectrum and can arise if a significant portion of the relevant consuming public recognizes the mark as a source indicator. Abercrombie & Fitch Trading Co. v. Fashion Shops of Kentucky Inc., 363 F.Supp.2d 952 (S.C. Ohio 2005), S.C. Ohio, No. 1:05cv29, 2/16/05 [BNA Mar. 11, 2005] Trademark infringement, first sale doctrine, gray goods Plaintiff contracts with clothing manufacturers to produce items that bear the company‟s trademarks. Goods that do not pass inspection may be sold by the manufacturer outside the U.S. pursuant to a sell-off agreement that requires plaintiff‟s assent and the cutting/marking of all interior labels. Only a certain retailer was allowed to sell plaintiff‟s end-of-season merchandise. Defendant was found selling numerous goods bearing plaintiff‟s trademarks. Plaintiff alleged that they were all non-genuine goods (either counterfeit or sold without authorization) and sought a preliminary injunction. The court ruled that goods rejected as defective by the trademark owner may be enjoined from sale in the U.S. as “materially different” gray goods. Defendant could not establish under the first sale doctrine that that the goods it was selling were genuine and bore plaintiff‟s legitimate mark. Plaintiff then successfully showed that defendant‟s use of its mark was likely to cause consumer confusion regarding the origin of the goods because the “gray goods” being sold abroad were materially different from authentic goods sold in the domestic market. Bosley Medical Institute Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005), 9th Cir., No. 04- 55962, 4/4/05 [BNA Apr. 8, 2005] Trademark infringement, domain names, Anticybersquatting Consumer Protection Act Defendant was not happy with the hair restoration services he received from plaintiff, so he created an internet gripe site at www.bosleymedical.com. In favor of defendant, the court ruled that criticizing a trademark owner‟s services through a website that incorporates the mark as a domain name does not give rise to trademark infringement or dilution liability. The court said that expressing an opinion about plaintiff‟s goods/services is not an actionable “use” of the trademark in connection with those goods or services, and trademark law is not designed to shield a trademark owner from criticism. In ruling for defendant, the court rejected the 4th Circuit‟s PETA v. Doughney holding, where a parody site violated the Lanham Act even though it lacked a commercial purpose. However, the court also reversed the lower court‟s ruling of summary judgment for defendant on a cybersquatting claim, since the Anticybersquatting Consumer Protection Act does not require a demonstration of “commercial use.” Google Inc. v. American Blind & Wallpaper Factory Inc., 2005 WL 832398 (N.D. Cal. 2005), N.D. Cal. No. C 03-05340, 3/30/05 [BNA Apr. 8, 2005] Initial interest confusion Arguing that only use of the mark to identify the source of its own goods and services would count for trademark infringement and dilution, and not use to identify those of another party, Google filed an action for declaratory judgment when American Blind threatened to sue for trademark infringement caused by Google‟s keyword advertising program. The court ruled that sponsored links triggered to appear when a user searches for a rival‟s trademark are a use in commerce of the mark that supports the claim for trademark infringement and dilution. Empresa Cubana del Tabaco d/b/a Cubatabaco v. Culbro Corp., 399 F.3d 462 (2d Cir. 2005), 2d Cir., No. 04-2527-cv(L) [BNA Mar. 18, 2005] Effect of embargo on trademark rights Plaintiff originally registered its “Cohiba” mark in Cuba, then began exporting Cohiba cigars abroad and eventually registered the mark in 115 countries. Defendant registered the mark in the U.S., so that when plaintiff tried to do the same, it was already taken. Defendant discontinued use of the mark in 1987, but in 1992 a cigar magazine popularized defendant‟s Cohiba cigar and defendant resumed use of the “Cohiba” name again. Having abandoned the original registration, defendant applied again for registration. After it was granted, plaintiff sued for trademark infringement. The court ruled that the U.S. government‟s embargo against Cuba prevents a Cuban tobacco company (plaintiff) from asserting rights that deprive a U.S. company (defendant) of its rights in the “Cohiba” trademark for cigars. Reversing a district court ruling that the plaintiff had acquired rights in the “Cohiba” mark under the famous marks doctrine, the court said the language in the embargo regulations that prohibits Cuban companies from acquiring property rights in the U.S. applies to rights to exclusive use of a trademark. Kemp v. Bumble Bee Seafoods Inc., 398 F.3d 1049 (8th Cir. 2005), 8th Cir., No. 02-3797, 2/13/05 [BNA Mar. 4, 2005] Likelihood of confusion, mark strength, consumer sophistication Plaintiff created his surimi processed fish product, then sold the business to Bumble Bee‟s predecessors. Plaintiff began using the “Louis Kemp mark” without seeking defendant‟s approval. Plaintiff filed for a declaratory judgment when he received a cease and desist letter from defendant. The court ruled that a wild rice producer that adopted the mark “Louis Kemp” expressly to associate his company with the similar brand of the fish company that he had earlier sold showed an intent to cause consumer confusion as to the source of his goods. Banjo Buddies Inc. v. Renosky, 399 F.3d 168 (3d Cir.), 3d Cir., No. 03-2038, 2/22/05 [BNA Mar. 4, 2005] Disgorgement of profits When plaintiff refused to market defendant‟s “Bionic Minnow” fishing lure, and defendant developed the product himself on informercials, plaintiff sued. Affirming an award of profits for plaintiff, the court ruled that Congress‟ 1999 amendment to Section 35(a) of the Lanham Act removed willful intent as a prerequisite to an award of profits in cases brought under Lanham Act Section 43(a). The court noted that Congress specifically amended Section 35(a) so that willfulness is required for monetary awards for trademark dilution under Section 43(c), not for Section 43(a) violations. A. Advertising Injury: Insurance policy's ad injury clause does not cover claims of misappropriations of trade secrets State Farm Fire & Cas. Co. v. Steinberg, 393 F.3d 1226 (11th Cir., 2004) An insurance company is not obligated by a policy‟s advertising injury coverage to defend a policy holder against a claim of misappropriation of trade secrets, the U.S. Court of Appeals for the 11th circuit ruled Dec. 17th. Affirming the judgment of a district court on different grounds, the court determined that the charges of conspiring with a company‟s employees to take proprietary client information and poach those clients did not constitute advertising occurrences covered by the clause. B. Company’s interest in software product showed that information is trade secret TouchPoint Solutions, Inc. v. Eastman Kodak Co., 345 F. Supp. 2d 23 (D. Mass., 2004) A company‟s months-long cooperation with a software developer regarding its interest in a software package was evidence of marketing advantage, a key to demonstrating the existence of a trade secret. The court, which granted in part the software developer‟s motion for preliminary injunction, emphasized that a trade secret IV. Trademarks /Trade Dress Liebert Corp. v. Mazur, 827 N.E.2d 909, 293 Ill. Dec. 28 (Ill. App. Ct. 2005), Ill. App. Ct., Second Division, No. 1-04-2794, 4/5/05 [BNA Apr. 22, 2005] Reasonable precautions to protect trade secret The court found that a company‟s inadequate security precautions rendered unsuccessful its claim for trade secret protection in its password-restricted customer list. Although Liebert required a password to gain access to the list at issue, it did not take further steps such as restricting paper copies of its customer list or requiring employees to sign a confidentiality agreement. Apple Computer Inc. v. Doe, 2005 WL 578641 (Cal. Super. Ct. 2005), Cal. Super. Ct., No. 1-04-CV-032178, 3/11/05 [BNA Mar. 18, 2005] Misappropriation, First Amendment as defense Apple computer Corp. sued unnamed individuals for trade secret misappropriation, alleging that they had leaked information about new Apple products to several online websites. When Apple subpoenaed the email-service provider Nfox, seeking the identities of the source of the confidential information, certain non-parties sought a protective order and argued that as journalists, they had a privilege from disclosing their sources, as well as the benefits of California‟s “shield law.” The court ruled that neither the First Amendment nor California‟s shield law for journalists bars discovery of the identities of persons who allegedly misappropriated Apple Computer‟s trade secrets by leaking them to Apple-oriented bloggers. The First Amendment does not allow bloggers a license to violate criminal laws, and the shield law provides limited protection – immunity from contempt that is not applicable to persons who post trade secrets on a website in violation of criminal law. A. Dilution: Identity marks creates presumption of actual dilution under Moseley Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir., 2004) A junior user‟s commercial use of a mark that is identical to the senior user‟s famous mark creates a presumption of the actual dilution element of a Federal Trademark Dilution Act claim required under the Supreme Court‟s Moseley decision, the U.S. Court of Appeals for the Second Circuit held Dec. 10. Vacating a dismissal for failure to show actual dilution, the plaintiff‟s claim that its “Savin” mark, and the court remanded the case to the district court for application of the proper standard. The court applied similar reasoning to vacate and remand the lower court ruling on state law dilution, but it affirmed a judgment for the defendant on trademark infringement based on a failure to show likelihood of confusion. B. Infringement: Coors' use of "Beerman" in ads did not violate "Bob the Beerman" mark Donchez v. Coors Brewing Co., 392 F.3d 1211 (10th Cir., 2004) Coors Brewing Co.‟s use of the term “beerman” in its advertisement did not infringe the plaintiff‟s “Bob the beerman” service mark because the “beerman” portion of the plaintiff‟s mark is generic and not entitled to protection under the Lanham Act, the U.S. Court of Appeals for the 10th Circuit held Dec. 22. Affirming a district court‟s summary judgment award for the defendant, the court stated that the term “beerman” was a composite term made up of two generic words and not a descriptive phrase. The plaintiff also failed to establish that the term had acquired secondary meaning, the court noted. C. Use of the mark "Shamir" is protectable even though the term is generic in Hebrew Blue & White Food Prods. Corp. v. Shamir Food Indus., 350 F. Supp. 2d 514 (D.N.Y., 2004) A food manufacturer‟s use of the mark “Shamir Salads” mark for kosher food products is not generic and is entitled to Lanham Act protection even though the term “Shamir is a generic Hebrew term for the herb Dill, The U.S. District court for the Southern District of New York held Dec. 22. Granting a plaintiff‟s request for a preliminary injunction, the court concluded that while the doctrine of foreign equivalents precludes the trademark registration of a generic term in a foreign language, the plaintiff‟s use of “Shamir Salads” for Kosher food products is suggestive and thus entitled to protection, The court also turned back the defendant‟s assertion that the salad products, finding instead that the plaintiff continued to use the mark on other products and claimed an intent to renew use of mark of vegetable salads in the near future. D. Lanham act 1. "Hooters Girl" is functional, not protectable as chief portion of restaurant trade dress HI Ltd. P'ship v. Winghouse of Fla., Inc., 347 F. Supp. 2d 1256 (D. Fla., 2004) The white tank top and orange shorts-clad "Hooters Girl” as the predominant feature of the Hooters restaurant trade dress, is not entitled to trade dress protection because she is primarily functional, serving to provide vicarious sexual recreation and arouse male Customers‟ fantasies, the U.S. District Court for the Granting a summary judgment to a competing restaurant charged with trade dress infringement and dilution the court said that even if the Hooters Girl is not functional, a server wearing a blacktank top and black running shorts is not a knockoff of the Hooters Girl' E. Attorney's fees 1. Fees award for litigation misconduct is appropriate in suits under Lanham Act Te-Ta-Ma Truth Foundation-Family of URI v. World Church of the Creator, 392 F.3d 248 (7th Cir., 2004) Attorneys' fees may be awarded for egregious litigation misconduct in suits brought under the Lanham Act, the U.S. Court of Appeals for the Seventh Circuit held Dec. 13 Reversing the district court, the appellate court made clear that willful trademark infringement is not the only culpable conduct on the part of the losing party that can be punished with a fee award under Section 35(a) of the statute, which authorizes the court to award reasonable attorneys' fees to the prevailing party "in exceptional cases." The World Church's "reprehensible" and "tortuous or criminal" conduct, in the form of "ugly, even threatening" communications qualified as an exceptional case, which triggered section 35(a) for the court to award reasonable attorneys‟ fees. F. Infringement 1. Peddling of counterfeit authenticity labels infringes trademark rights, says Microsoft Microsoft Corp. v. Software Provisions LLC, W.D. Wash., 3:04-cv 05802-JKA, filed 11/29/04) The distribution of counterfeit certificate of authenticity labels with bootleg copies of Microsoft software infringes the publisher‟s trademarks because it confuses consumers into believing that the software is genuine. The Microsoft lawsuit takes aim at a growing annoyance for software publishers: bootleggers who traffic not only in counterfeit software, but in phony, official looking certificates intended to dupe consumers into thinking they have purchased the genuine article. G. Internet 1. Google Keyword triggered ads don't infringe, but use of "Geico" in sponsored links do. Gov't Emples. Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700 (D. Va., 2004) Sponsored web links that display “Geico” violate the Lanham Act, but there is insufficient evidence to show that the use of “Geico” as a keyword to trigger a sponsored link unadorned by the mark is likely to cause confusion. The court faulted Geico's expert survey by Dr' Gary Ford, which principally focused on sponsored links that used "Geico; in the text and not those merely triggered by the term. "What I don't feel was presented to the court that needed to be presented to the court would have been ads of insurance that did not have 'Geico' in it," the court commented. The court found that Ford's survey "does establish that those sponsored sites that contain 'Geico' either in the title or in the text are likely to confuse for purposes of the Lanham Act." However, the court concluded that survey evidence had failed to establish that consumers were confused by sponsored links that do not display Geico's mark. "There's no evidence that activity standing alone causes confusion," the court said. H. Oppositions 1. Oppositions to Ritz Hotel trademarks are dismissed on appeal from PTO Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238 (Fed. Cir., 2004) The Ritz Hotel's applications to register an array of Ritz marks for everything from shower curtains to clothing can go forward, the U.S. Court of Appeals for the Federal Circuit held Dec. 17 Affirming the Trademark Trial and Appeal Board's dismissal of several trademark oppositions, and reversing the board's rulings sustaining others, the court said that dissimilarities in the parties' marks and goods made it unlikely that consumers would be confused as to their source. While the challenger's mark was in use for over a century, the court was not persuaded that it had acquired sufficient fame to warrant enhanced protection against the luxury hotel's expansion of its marks to other goods. Although Shen's Ritz mark has been in use for more than a century, he said, it does not compare with other famous marks in terms of sales, advertising, or media interest. Although the parties‟ goods are related, the two marks are dissimilar enough to prevent a likelihood of confusion. I. Territoriality 1. Mark's fame among substantial majority required for territoriality rule exception Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088 (9th Cir., 2004) A foreign user of a mark can establish priority in a territory within the United States under the famous mark exception to the territoriality doctrine only by showing that a "substantial percentage" of the public is familiar with the foreign use. The court acknowledged that it was the first circuit court to hold that U.S. fame of foreign mark can suffice to establish rights in this country, but it took issue with district court's- conclusion that the foreign user qualified for the exception merely upon a showing of secondary meaning among consumers in the relevant U'S' market' The court accordingly vacated a judgment for the foreign user and remanded the case for application of the stiffer, "substantial percentage" standard. Concurring Judge Susan P. Gra6er agreed with the majority that a higher level of fame is required to qualify for the territoriality exception, but she would have held as a matter of law that the standard was not met in this case. To qualify for the famous mark exception to the territoriality rule, a foreign trademark owner must show a higher level of "fame" than secondary meaning. Gigante had 100 supermarkets in Mexico but failed to act in 1995 when they discovered Dallos‟ use of the name “Gigante.” The doctrine of laches applies. J. Search engine's "confusion" of terms not evidence of actual consumer confusion Playtex Prods. v. Georgia-Pacific Corp., 390 F.3d 158 (2d Cir., 2004) That an Internet search engine confused the terms "Wet Ones" and "Moist-Ones" with regard to moistened towelettes is not evidence of actual consumer confusion regarding the two terms, the U.S' Court of Appeals for the Second Circuit ruled Nov. 23. Determining that there was no demonstration that a competitor's use of the term "Moist- Ones" in conjunction with its house brand resulted in likelihood of confusion, the court upheld a summary judgment in favor of the defendants on federal and state trademark claims. K. "Madison's Progressive Talk" for radio station is descriptive, lacks secondary meaning Mid-West Mgmt., Inc. v. Capstar Radio Operating Co., 2004 U.S. Dist. LEXIS 22775 (D. Wis., 2004) The phrase "Madison's Progressive Talk" for a radio station featuring progressive political programming is descriptive and has not acquired the level of secondary meaning needed for protection as a trademark under the Lanham Act. Denying the radio station's motion for a preliminary injunction against a competing station using the same slogan, the court rejected the contention that the mark is merely suggestive because it does not fully describe the content of the plaintiff's broadcasts or refer specifically to the broadcasts, and because the defendant can use other phrases to describe the content of its own broadcasts. In finding no evidence of secondary meaning, the court noted that the plaintiff had used the phrase exclusively for only four days before the defendant began its competing use. L. Ownership of Olympics, Red Cross marks is clarified An article in the Nov. 19 issue of PTCJ entitled “Trademarks and Domain Names: Some Issues Affecting Contractors in the Federal Government Marketplace" (69 PTCJ 54, 11/19/04) imprecisely characterized certain trademarks (Olympic and the five-ring Olympic logo, and Red Cross) as "property of the U.S. governm6nt." The Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. $ 220506, grants the United States Olympic Committee exclusive rights to use the Olympic and Red Cross logo. The Red Cross statute, l8 U.S.C. §§ 706, 917, provides similar protection to the Red Cross.
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