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It’s Good to Be the Sovereign, Unless You Have an Exclusive Licensee

Addressing the interaction between state sovereign immunity under the 11th Amendment and joinder under the Federal Rules of Civil Procedure, a “fractured majority” of the US Court of Appeals for the Federal Circuit determined that an exclusive licensee could proceed with suit even though state sovereign immunity prohibited involuntary joinder of the patent owner. Gensetix, Inc. v. The Board of Regents of the University of Texas System, Case No. 19-1424 (Fed. Cir. July 24, 2020) (O’Malley, J.) (Newman, J., concurring in part and dissenting in part) (Taranto, J., concurring in part and dissenting in part). In 2014, Gensetix indirectly licensed two patents covering cancer treatment methods from the University of Texas (UT), a state university. A subsequent confirmation between Gensetix and UT confirmed Gensetix’s exclusive license to the patents-in-suit, which required Gensetix to sue potential infringers and gave UT a secondary right to sue if Gensetix did not...

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“Salacious” Content Doesn’t Bar Discovery in Copyright Infringement Suit

The US Court of Appeals for the District of Columbia Circuit preserved discovery options for copyright owners fighting online piracy when it reversed the district court’s refusal to allow a subpoena of an alleged online infringer’s internet service provider. The DC Circuit found that the district court abused its discretion by relying heavily on the copyright owner’s litigation history and the nature of its films rather than the relevant legal standards under the Federal Rules of Civil Procedure. Strike 3 Holdings, LLC v. John Doe, Subscriber Assigned IP Address 73.180.154.14 (DC Cir. July 14, 2020) (Rao, J.). Strike 3 is a producer and online distributor of adult films. Like most of its industry peers, the company faces significant online piracy that is often facilitated by peer-to-peer file sharing. To combat this infringement, Strike 3 regularly files copyright infringement lawsuits against “John Doe” defendants based on the internet protocol (IP) address...

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Knock It Off, Knockoffs? Ninth Circuit Affirms Trade Dress Rights but Not Fame

Taking on issues of functionality and fame relating to trade dress rights, the US Court of Appeals for the Ninth Circuit affirmed in part and reversed in part the district court’s judgment after a jury trial on claims of infringement and dilution of trade dress rights in furniture. The Ninth Circuit distinguished utilitarian functionality from aesthetic functionality, and reaffirmed the high burden on the proponent of dilution to establish that the mark has become a “household name.” Blumenthal Distributing, Inc. DBA Office Star v. Herman Miller, Inc., Case Nos. 18-56471, -56493 (9th Cir. June 25, 2020) (Korman, J.). In 2013, Herman Miller accused Office Star Products (OSP) of selling unauthorized replicas of its Eames lounge chair and Aeron ergonomic office chair, and filed suit against the company for infringement and dilution of its claimed registered and unregistered trade dress rights in the chairs. A jury found that both the registered and unregistered...

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GOOGLES Wins Right to Sue Google

The US Court of Appeals for the Second Circuit vacated and remanded a district court’s dismissal of a trademark dispute for lack of subject matter jurisdiction, noting that the dispute arose under contractual standing, which is not a jurisdictional issue. SM Kids, LLC v. Google LLC, Alphabet Inc., Case No. 19-cv-2547 (2d Cir. June 25, 2020) (Parker, J.). In 1997, Googles Children’s Workshop registered the trademark GOOGLES and the internet domain name www.googles.com. The website launched in 1998 and focused on children’s education and entertainment. That same year, Google adopted its name, and in 2004 it registered the GOOGLE mark. In 2005, the founder of Googles Children’s Workshop sued Google for trademark infringement. In 2007, the Googles Children’s Workshop founder assigned all rights in the mark GOOGLES to Stelor Productions. In 2008, Stelor and Google settled the trademark infringement dispute, with Google agreeing to not intentionally make material...

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Trademark Claim for Profit Damages Means No Jury Trial

The US Court of Appeals for the Ninth Circuit affirmed a denial of a jury trial demand in a trademark infringement lawsuit where only a claim of disgorgement of profits was at issue. JL Beverage Company, LLC v. Jim Beam Brands Co., Beam Inc., Case No. 18-16597 (9th Cir. May 27, 2020) (Wallace, J.) (Friedland, J., concurring). JL sued Jim Beam for trademark infringement. JL manufactured and sold vodka in bottles featuring stylized depictions of lips. Jim Beam also sells vodka in bottles featuring stylized depictions of lips. JL alleged that consumers would confuse its “Johnny Love Vodka” lip mark with Jim Beam’s Pucker line of flavored vodka products. After JL failed to provide a computation of actual damages during discovery, Jim Beam sought to limit the damages JL could seek at trial. The district court found that JL’s failure prevented Jim Beam from preparing a responsive case and granted Jim Beam’s motion to exclude JL’s claims for actual damages. Jim Beam...

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Copyright Office, Not Courts, Determines Validity of Registrations Containing Inaccurate Information

With the validity of a copyright registration at issue, the US Court of Appeals for the Ninth Circuit reversed and remanded a district court’s judgment after a jury trial and award of attorney’s fees in favor of the plaintiff in a copyright infringement action, holding that the district court was required to request the Register of Copyrights to advise whether inaccurate information, if known, would have caused the Register to refuse registration of the plaintiff’s asserted copyright. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., (9th Cir. May 29, 2020) (Bea, J.). The appeal to the Ninth Circuit arose from a copyright infringement action brought by Unicolors, a company that creates designs for use on textiles and garments, against the global fast-fashion retail giant, H&M Hennes & Mauritz (H&M). After a jury found substantial similarity between a design created by Unicolors in 2011 and a design printed on a skirt and jacket sold by...

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Prevailing at the PTAB Can Mean Prevailing Party Attorneys’ Fees

Addressing whether attorneys’ fees may be awarded in a patent infringement lawsuit where an accused infringer successfully invalidates claims in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the accused infringer is considered the “prevailing party” for purposes of 35 U.S.C. § 285, but remanded for consideration on whether fees incurred in IPR proceedings can be awarded. Dragon Intellectual Property, LLC v. DISH Network LLC, et al., Case No. 19-1283 (Fed. Cir. Apr. 22, 2020) (Moore, J.). Dragon sued DISH, Sirius and others for patent infringement. DISH responded by filing an IPR petition attacking the validity of the patent. The district court stayed the proceedings as to DISH and Sirius, who joined the IPR, but proceeded with claim construction as to the other defendants. Following claim construction, the district court entered a judgment of noninfringement as to all defendants. The Patent Trial and...

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Rock Dust Dust-Up: Failure to Preserve Issues, Present Evidence at Trial Dooms Appeal

The US Court of Appeals for the Federal Circuit affirmed a jury verdict of infringement of a design patent on grounds that purported appellate issues had not been properly presented to the trial court. Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and Maintenance, Inc., Case No. 18-1904 (Fed. Cir. Mar. 16, 2020) (per curiam) (Newman, J., concurring in part, dissenting in part). Hafco Foundry and Machine Company owns a US design patent for a rock dust blower, a piece of equipment used in mining. Hafco developed and manufactured the device and contracted with GMS to distribute it. When Hafco terminated the agreement, GMS produced its own rock dust blower. Hafco then sued GMS for infringement of its design patent. The jury found GMS liable for willful infringement and awarded damages. After trial, the district court entered a permanent injunction but, on GMS’s motion, remitted the damages award to zero and granted a new trial on damages, which it stayed...

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A Mixed Bag on New Rules – Juggling Copyright Preclusion and Patent Infringement

Addressing issues of copyright and patent infringement, the US Court of Appeals for the Federal Circuit found that the Federal Insecticide, Fungicide, and Rodenticide Act did not preempt copyright protection and that patent infringement under 35 U.S.C. § 271(g) does not require that the claimed process be performed by a single entity. Syngenta Crop Protection, LLC v. Willowood, LLC, Case Nos.18-1614, -2044 (Fed. Cir., Dec. 18, 2019) (Reyna, J.). Syngenta sued Willowood for patent and copyright infringement. Syngenta accused Willowood of infringing four patents directed to a fungicide compound and its manufacturing process. Syngenta also accused Willowood of copyright infringement for the labels Willowood used on its generic fungicide end-use products. Prior to trial, the district court dismissed the copyright claims, finding that the Federal Insecticide, Fungicide, and Rodenticide Act (FIFRA) precluded copyright protection. After trial, the district court...

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