Weekly Summaries Distributed July 23, 2015
- Kimble v. Marvel Entertainment, LLC
Intellectual Property, Patents
U.S. Supreme Court
- Humphreys & Partners Architects v. Lessard Design, Inc.
Copyright, Intellectual Property
U.S. Court of Appeals for the Fourth Circuit
- Bell v. Taylor
Copyright, Intellectual Property
U.S. Court of Appeals for the Seventh Circuit
- 16 Casa Duse, LLC v. Merkin
Copyright, Entertainment & Sports Law, Intellectual Property
U.S. Court of Appeals for the Second Circuit
- Independent Producers Group v. Library of Congress
Copyright, Entertainment & Sports Law, Intellectual Property
U.S. Court of Appeals for the District of Columbia Circuit
- Spear Marketing, Inc. v. BancorpSouth Bank
Copyright, Intellectual Property
U.S. Court of Appeals for the Fifth Circuit
- Multi Time Machine v. Amazon.com
Intellectual Property, Internet Law, Trademark
U.S. Court of Appeals for the Ninth Circuit
- Arrowpoint Capital Corp v. Arrowpoint Asset Mgmt., LLC
Intellectual Property, Trademark
U.S. Court of Appeals for the Third Circuit
- Juice Generation, Inc. v. GS Enters., LLC
Intellectual Property, Trademark
U.S. Court of Appeals for the Federal Circuit
- In re: Posco
Civil Procedure, Intellectual Property, International Law
U.S. Court of Appeals for the Federal Circuit
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| Court: U.S. Supreme Court Docket: 13-720 | Opinion Date: June 22, 2015 |
| Areas of Law: Intellectual Property, Patents |
Marvel Entertainment’s corporate predecessor agreed to purchase Kimble’s patent for a Spider-Man toy in exchange for a lump sum plus a 3% royalty on future sales. The agreement set no end date for royalties. As the patent neared the end of its statutory 20-year term, Marvel discovered Brulotte v. Thys Co., in which the Supreme Court held that a patentee cannot continue to receive royalties for sales made after his patent expires and sought a declaratory judgment that it could stop paying Kimble royalties. The district court granted relief. The Ninth Circuit and Supreme Court affirmed, adhering to Brulotte. A patent typically expires 20 years from its application date. 35 U S.C. 154(a)(2). At that point, the unrestricted right to make or use the article passes to the public. The Brulotte rule may prevent some parties from entering into deals they desire, but parties can often find ways to achieve similar outcomes. Congress, moreover, has had multiple opportunities to reverse Brulotte and has even rejected bills that would have replaced Brulotte’s per se rule with the rule of reason standard. Congress, not the Court, gets to make patent policy.
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| Court: U.S. Court of Appeals for the Fourth Circuit Docket: 14-2030 | Opinion Date: June 23, 2015 |
| Areas of Law: Copyright, Intellectual Property |
HPA filed suit against Lessard, Clark, Penrose, and Northwestern, alleging that the design, development, ownership, and construction of Two Park Crest, an apartment building in McLean, Virginia, infringed HPA’s architectural copyright embodied in Grant Park, a condominium building in Minneapolis, Minnesota. The district court granted summary judgment to defendants, primarily because no reasonable jury could find that the Grant Park and Two Park Crest designs are substantially similar. The court concluded that the district court did not err in considering expert reports where the reports were were sworn to in declarations; at bottom, HPA failed to carry its burden of identifying a specific similarity between the Two Park Crest design and the protected elements of its Grant Park design; because HPA failed to present nonconclusory evidence that the designs are extrinsically similar, the court rejected HPA’s claim that the district court failed to credit its extrinsic-similarity evidence; and the court rejected HPA's claims that the district court misapplied relevant copyright law. Accordingly, the court affirmed the judgment.
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| Court: U.S. Court of Appeals for the Seventh Circuit Docket: 14-3099 | Opinion Date: June 29, 2015 |
| Areas of Law: Copyright, Intellectual Property |
Bell, a lawyer and photographer, alleged that three small Indianapolis business owners violated federal copyright laws and an Indiana theft statute by publishing on the internet a photo that he took of the Indianapolis skyline without his authorization. In August 2013, the district court set a deadline for filing motions for leave to amend the pleadings. Bell sought to amend his complaint (for a fourth time) eight months after the cut-off after learning that defendant Taylor had not actually used the photo at issue but had displayed a different photo belonging to Bell. The district court denied Bell’s motion, citing undue delay and his own carelessness. The district court granted defendants summary judgment on the damages issue, finding that Bell cannot demonstrate how they caused him financial harm and was not entitled to monetary recovery. The Seventh Circuit dismissed for lack of jurisdiction. Although the court purported to issue a “final judgment” after ruling on the summary judgment motion, it did so in error; the issue of injunctive relief was never adjudicated. Because Bell’s copyright claim was not entirely disposed of by the ruling, the judgment was not final.
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| Court: U.S. Court of Appeals for the Second Circuit Docket: 13-3865 | Opinion Date: June 29, 2015 |
| Areas of Law: Copyright, Entertainment & Sports Law, Intellectual Property |
Defendant, a film director, producer, and editor, appealed the district court's grant of summary judgment in favor of plaintiff, a film production company, on its copyright and state-law claims related to the film entitled "Heads Up." At issue was whether a contributor to a creative work whose contributions are inseparable from, and integrated into, the work maintain a copyright interest in his or her contributions alone. Determining that the court had jurisdiction over the merits of the appeal, the court concluded that, on the facts of the present case, the Copyright Actʹs, 17 U.S.C. 102, terms, structure, and history support the conclusion that defendantʹs contributions to the film do not themselves constitute a ʺwork of authorshipʺ amenable to copyright protection. The court concluded that a directorʹs contribution to an integrated ʺwork of authorshipʺ such as a film is not itself a ʺwork of authorshipʺ subject to its own copyright protection. Therefore, defendant did not obtain and does not possess a copyright in his directorial contributions to the finished film. The court agreed with the district court that in this case, plaintiff was the dominant author of the film and concluded that plaintiff owns the copyright in the finished film and its prior versions, including the disputed ʺraw film footage.ʺ Finally, the court disagreed with the district court's conclusion that defendant's interference with plaintiff's planned screening and post-screening reception constituted tortious interference under New York law. Rather, the court concluded that the undisputed material facts require judgment as a matter of law in defendantʹs favor. Accordingly, the court affirmed in part, reversed in part, and remanded with instructions and for the district court to reexamine its award of costs and attorneyʹs fees, and for such other proceedings as are warranted.
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| Court: U.S. Court of Appeals for the District of Columbia CircuitDocket: 13-1274 | Opinion Date: June 30, 2015 |
| Areas of Law: Copyright, Entertainment & Sports Law, Intellectual Property |
IPG, representative of several copyright owners in the 2000-03 royalty fee distribution proceeding, alleged that the Board erred in determining IPG's royalty fees in the sports programming and program suppliers categories. As a preliminary matter, the court concluded that the orders at issue are subject to judicial review as part of the Board’s final determination and therefore, the court has jurisdiction to review the merits of the appeal. The court concluded that an evidentiary sanction that the Board imposed during the preliminary evidentiary hearing is not arbitrary and capricious where the Board reasonably responded to a blatant discovery violation by IPG; no basis exists for overturning the Board’s reasoned decision to reject IPG’s sports programming claims on behalf of FIFA and the U.S. Olympic Committee; and the court rejected IPG's contentions that the Board improperly relied on the MPAA's methodology for calculating the relative marketplace value of their claims and allocating royalty fees within the program suppliers category. Accordingly, the court affirmed the judgment.
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| Court: U.S. Court of Appeals for the Fifth Circuit Docket: 14-10753 | Opinion Date: June 30, 2015 |
| Areas of Law: Copyright, Intellectual Property |
SMI filed suit against BCS and ARGO, alleging violations of various Texas state law claims related to defendants' alleged theft of trade secrets in connection with a software program developed and sold by SMI. After removal to federal court, the district court denied SMI's motion to remand and subsequently granted defendants' motion for summary judgment. The court concluded that the district court was correct to consider only the Original Petition when deciding SMI’s motion to remand; held that state law claims based on ideas fixed in tangible media are preempted by section 301(a) of the Copyright Act, 17 U.S.C. 301(a), and that the technical trade secrets found within VaultWorks fall within the subject matter of copyright; affirmed the district court’s denial of SMI’s motion to remand and held that it properly exercised jurisdiction over this action as a result of complete preemption by the Copyright Act; concluded that it would not be reasonable for a jury to infer that defendants used SMI’s trade secrets and therefore, the court affirmed the district court’s dismissal of SMI’s claim of misappropriation of trade secrets; and concluded that SMI has waived its remaining claims. Accordingly, the court affirmed the judgment.
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| Court: U.S. Court of Appeals for the Ninth Circuit Docket: 13-55575 | Opinion Date: July 6, 2015 |
| Areas of Law: Intellectual Property, Internet Law, Trademark |
MTM filed suit against online retailer Amazon under the Lanham Act, 15 U.S.C. 1051 et seq., alleging that Amazon had infringed MTM's trademark. MTM argues that initial interest confusion might occur because Amazon lists the search term used – here the trademarked phrase “mtm special ops” – three times at the top of its search page. The district court granted summary judgment in favor of Amazon. The court considered five non-exhaustive Sleekcraft factors to determine whether a trademark gives rise to a likelihood of confusion: the strength of the mark, relatedness/proximity of the goods, evidence of actual confusion, defendant’s intent, and the degree of care exercised by purchasers. The court concluded that there are genuine issues of material fact as to whether there is a likelihood of confusion under the initial interest confusion theory. Finally, the court held that the customer-generated use of a trademark in the retail search context is a use in commerce. In this case, Amazon's purpose is not less commercial just because it is selling wares, not advertising space. Therefore, the court declined to affirm the district court on the alternative ground that Amazon’s use is not a use in commerce. Accordingly, the court reversed and remanded.
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| Court: U.S. Court of Appeals for the Third Circuit Docket: 14-3063 | Opinion Date: July 16, 2015 |
| Areas of Law: Intellectual Property, Trademark |
Capital is a Delaware holding company, whose subsidiaries, Arrowood Indemnity and Arrowood Surplus Lines Insurance, provide insurance and investment-related financial services throughout the United States under the Arrowpoint Capital name. Capital unsuccessfully sought to enjoin AAM from using a logo or word mark employing the name “Arrowpoint” in connection with any investment-related products and services. The Third Circuit vacated and remanded, finding that the lower court employed an overly narrow interpretation of the kind of confusion that is actionable under the Lanham Act, 15 U.S.C. 1114. The court .failed to hold an evidentiary hearing, or to adequately set forth its rationale for discounting Capital’s evidence, or to hear oral argument,
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| Court: U.S. Court of Appeals for the Federal Circuit Docket: 14-1853 | Opinion Date: July 20, 2015 |
| Areas of Law: Intellectual Property, Trademark |
Juice Generation, which operates New York City juice bars, applied to the Patent and Trademark Office to register a mark consisting of “PEACE LOVE AND JUICE,” 15 U.S.C. 1051(b), and a design for use with its juice bar services. GS Enterprises opposed the application on the ground that the mark was likely to cause confusion with its own family of marks, all of which contain the phrase “PEACE & LOVE” and are registered for use with restaurant services. The Trademark Trial and Appeal Board sustained the opposition and refused to register Juice Generation’s mark. The Federal Circuit remanded, finding that the Board did not adequately assess the weakness of GS’s marks and did not properly consider the three-word combination of Juice Generation’s mark as a whole in comparing it to the two-word combination in GS’s marks.
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| Court: U.S. Court of Appeals for the Federal Circuit Docket: 15-112 | Opinion Date: July 22, 2015 |
| Areas of Law: Civil Procedure, Intellectual Property, International Law |
Nippon Steel filed suit, charging POSCO with patent infringement and unfair competition. The court entered a protective order prohibiting cross-use of confidential materials which “shall be used by the receiving Party solely for purposes of the prosecution or defense of this action.” POSCO later produced several million pages of documents containing confidential information. Nippon also sued POSCO (based in Korea) in Japan for alleged trade secret misappropriation. POSCO filed a declaratory judgment action in Korea. Discovery in U.S. federal courts is more generous than in Japan and Korea, so Nippon moved the court to modify its discovery protective order for the purposes of providing foreign counsel in the Japanese and Korean actions approximately 200 pages of proprietary documentation relating to POSCO’s manufacturing process. Based on the Federal Rules of Civil Procedure and the balancing framework for modifying discovery orders, a special master concluded that modification should be granted, subject to restrictions to keep the information confidential. Among the restrictions: “[b]efore the documents may be submitted to a foreign court, the court must identify the information and agree that it would be maintained as confidential and restricted from third party access.” The district court and Federal Circuit affirmed.
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