organized by topic by pengxiang


									                                 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

 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 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 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

 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

 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
    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
 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.

 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
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
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
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
   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

 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

  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
 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"
 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
 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
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.
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
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
 (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
   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 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

 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 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
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.,
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.
 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
 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
 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
 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

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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