Mealey's Intellectual Property

  • September 20, 2017

    Scholastic Wins Transfer Of Copyright Action To New York Federal Court

    TRENTON, N.J. — Allegations that Scholastic Inc. exceeded the terms of a limited license to use a plaintiff’s copyrighted photographs in its publications will proceed in New York federal court in light of Scholastic’s forum-selection clause with a stock photography agency, a New Jersey federal judge ruled Sept. 15 (George Steinmetz v. Scholastic Inc., No. 16-3585, D. N.J., 2017 U.S. Dist. LEXIS 149952).

  • September 20, 2017

    2nd Circuit Affirms Denial Of Request To Disqualify Trademark Counsel

    NEW YORK — Although vacating and remanding a permanent injunction, the Second Circuit U.S. Court of Appeals on Sept. 19 affirmed a New York federal judge’s decision to deny a request for disqualification of Locke Lord in a dispute over the Swiss Army knife trade dress (Victorinox AG, et al. v. The B&F Systems Inc., et al., Nos. 15-4032, 16-2690, 2nd Cir., 2017 U.S. App. LEXIS 18070).

  • September 19, 2017

    Dow Seeks High Court Review Of Ruling Confirming $442M Award

    WASHINGTON, D.C. — A company on Sept. 11 filed a petition for writ of certiorari with the U.S. Supreme Court in relation to the confirmation of a $442 million arbitration award issued against it in a dispute over patent infringement, asking the court to review whether a federal court must independently determine if enforcement of an award under the United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards, 9 U.S.C. § 201 et seq., violates U.S. public policy (Dow Agrosciences LLC, et al. v. Bayer Cropscience NV, No. 17-372, U.S. Sup., 2017 U.S. S. Ct. Briefs LEXIS 3444).

  • September 19, 2017

    9th Circuit Reverses, Remands Trade Dress Functionality Ruling

    SAN FRANCISCO — A California federal judge erred in holding that the overall configuration of a live auction television show is functional, the Ninth Circuit U.S. Court of Appeals ruled Sept. 15, reversing and remanding the denial of preliminary injunctive relief in a trade dress infringement and trade secret misappropriation case (VBS Distribution Inc. v. Nutrivita Inc., et al., No. 17-11598, 9th Cir., 2017 U.S. App. LEXIS 17951).

  • September 19, 2017

    New York Federal Judge Denies UMG’s Motion To Dismiss Copyright Claim

    BROOKLYN, N.Y. — Assertions by defendant Universal Music Group (UMG) Inc. that a copyright infringement action should be dismissed on jurisdiction grounds or for failure to state a claim were rejected as “legally insufficient” by a New York federal judge on Sept. 17 (Hypefortype Ltd v. Universal Music Group Inc., No. 17-4468, E.D. N.Y., 2017 U.S. Dist. LEXIS 150500).

  • September 18, 2017

    Judgment Premised On Erroneous Claim Construction, Federal Circuit Says

    WASHINGTON, D.C. — A Michigan federal judge did not abuse her discretion in dismissing patent invalidity defenses and counterclaims in a dispute over soffit panels but did err in granting the patent owner a summary judgment of infringement and permanent injunction, the Federal Circuit U.S. Court of Appeals ruled Sept. 15 (Quality Edge Inc. v. Rollex Corporation, No. 17-1005, Fed. Cir., 2017 U.S. App. LEXIS 17855).

  • September 18, 2017

    Federal Circuit Affirms: Jurisdiction Lacking In Patent Ownership Case

    WASHINGTON, D.C. — A concession by two declaratory judgment defendants that they currently hold no title to a patent portfolio and that they will not hold title until a court determines otherwise are fatal to two declaratory judgment plaintiffs’ assertion of federal subject matter jurisdiction over a dispute over ownership of the same patent portfolio, the Federal Circuit U.S. Court of Appeals affirmed Sept. 15 (First Data Corporation et al. v. Eric Inselberg et al., Nos. 2016-2677, -2696, Fed. Cir.).

  • September 15, 2017

    Bourbon Distiller Tells 5th Circuit Plaintiff Abandoned ‘Cowboy’ Mark

    NEW ORLEANS — Citing years with no sales of its trademarked whiskey, coupled with having never sold its product in the United States, a bourbon distillery argues in a Sept. 6 brief to the Fifth Circuit U.S. Court of Appeals that a jury correctly found that a plaintiff whiskey seller abandoned its trademark years before the defendant’s use of a similar mark (Allied Lomar Inc. v. Lone Star Distillery LLC, et al., No. 17-50148, 5th Cir.).

  • September 15, 2017

    Federal Judge Grants Motion For Judgment In Hookah Patent Infringement Suit

    LOS ANGELES — A federal judge in California on Sept. 11 granted a hookah bowl maker’s motion for default judgment against a hookah retailer and awarded the plaintiff $105,600 in damages, which includes attorney fees (Albert Kirakosian, et al. v. J&L Sunset Wholesale & Tobacco, et al., No. 2:16-cv-06097, C.D. Calif., 2017 U.S. Dist. LEXIS 147715).

  • September 15, 2017

    Opposing Certiorari, Film Parties Call Screenplay Copyright Suit ‘Unremarkable’

    WASHINGTON, D.C. — The Ninth Circuit U.S. Court of Appeals’ summary affirming of a trial court’s dismissal of a screenplay owner’s copyright infringement suit against parties connected with the movie “Walk of Shame” was unremarkable and presents no issues meriting review, the defendants tell the U.S. Supreme Court in a Sept. 1 brief opposing certiorari (Shame On You Productions Inc. v. Elizabeth Banks, et al., No. 17-180, U.S. Sup.).

  • September 15, 2017

    Louis Vuitton, Parody Bag Maker Argue Trademark Dilution To Supreme Court

    WASHINGTON, D.C. — Luxury goods maker Louis Vuitton Malletier S.A. (LV) seeks a grant of certiorari from the U.S. Supreme Court to examine the standard for determining when the use of a trademark is a parody, and thus fair use, per the Trademark Dilution Revision Act (TDRA), while a defendant asserts that its accused handbags were clearly noninfringing parodies of LV’s products, as a trial court and an appeals court both ruled (Louis Vuitton Malletier S.A. v. My Other Bag Inc., No. 17-72, U.S. Sup.).

  • September 15, 2017

    Trademark Applicant Tells Federal Circuit Design Is Not Functional

    WASHINGTON, D.C. — An examiner’s decision — later upheld by the U.S. Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) — that a proposed U-shaped design for a locking channel is unprotectable as functional in light of several expired utility patents will be debated Oct. 4 before the Federal Circuit U.S. Court of Appeals (In re:  Openings, No. 16-2307, Fed. Cir.).

  • September 15, 2017

    Patent Board Won’t Rehear Denial Of Inter Partes Review

    ALEXANDRIA, Va. — An expanded panel of the Patent Trial and Appeal Board on Sept. 6 announced that it won’t reconsider its decision to deny five separate requests for inter partes review by General Plastic Industrial Co. Ltd., saying “multiple, staggered petition filings, such as those here, are an inefficient use of the inter partes review process and the Board’s resources” (General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha, Nos. IPR2016-01357, IPR2016-01358, IPR2016-01359, IPR2016-01360, IPR2016-01361, PTAB).

  • September 15, 2017

    Patent Board Institutes Review Of System, Method For Controlling Trains

    ALEXANDRIA, Va. — In a Sept. 14 ruling, the Patent Trial and Appeal Board found that Westinghouse Air Brake Technologies Corp. enjoys a reasonable likelihood of proving that various claims of a patented system and method of controlling a train are unpatentable (Westinghouse Air Brake Technologies Corp. v. Siemens Industries Inc., No. IPR2017-00981, PTAB).

  • September 15, 2017

    Parties, PTO Brief High Court On Requirements Of Inter Partes Review Scope

    WASHINGTON, D.C. — In a pair of Sept. 5 respondent briefs, the interim director of the U.S. Patent and Trademark Office (PTO) and a patent holder tell the U.S. Supreme Court that when the Trademark Trial and Appeal Board (TTAB) institutes inter partes review (IPR) of the validity of patent claims, it is not required to review or rule on every patent claim asserted in a party’s petition for review (SAS Institute Inc. v. Joseph Matal, et al., No. 16-969, U.S. Sup.).

  • September 14, 2017

    Oral Arguments Approach In Patent Dispute Over Safe Harbor

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on Oct. 4 will hear oral arguments in a case that poses the question of whether safe harbor protection for clinical activities can be repealed based upon the use of data derived subsequent to approval (Classen Immunotherapies Inc. v. Elan Pharmaceuticals Inc., No. 17-1033, Fed. Cir.).

  • September 14, 2017

    Judge Grants Discovery Request Related To Illegal Amazon, EBay Sales

    SAN FRANCISCO — A California federal judge on Sept. 1 granted a motion filed by a distributor of trademarked and copyrighted products and designs that alleges that a retailer violated trademark law and California’s unfair competition law (UCL) by selling counterfeited items online, granting its request for limited discovery from online retailers regarding the defendant’s sales and aliases (Jessie Steel, Inc. v. Linda Ann Henderson, No. 17-cv-02179, N.D. Calif., 2017 U.S. Dist. LEXIS 142167).

  • September 14, 2017

    With Similarity Lacking, California Federal Judge Dismisses Copyright Case

    LOS ANGELES — Allegations that the sponsor of a screenwriting contest misappropriated one of the submissions for use in the hit ABC sitcom “Black-ish” were rejected Sept. 13 by a California federal judge, who found no similarity between the sitcom and the submission as required to maintain a claim of copyright infringement (David Lloyd Marcus v. ABC Signature Studios Inc., et al., No. 17-148, C.D. Calif., 2017 U.S. Dist. LEXIS 148568).

  • September 14, 2017

    Black & Decker Loses Out On $54M Trademark Verdict Due To Expert’s Flawed Survey

    CHICAGO — Two companies got a $54 million trademark infringement verdict against them tossed Sept. 11 when an Illinois federal judge granted them a new trial based on the unreliability and irrelevance of expert testimony regarding the likelihood of consumer confusion about the products at issue, which the judge said probably “unfairly influenced the jury’s verdict” (The Black & Decker Corporation, et al. v. Positec USA Inc., et al., No. 11-cv-5426, N.D. Ill., 2017 U.S. Dist. LEXIS 147463).

  • September 13, 2017

    Petitioner Tells Patent Board Semiconductor Testing Patent Is Obvious

    ALEXANDRIA, Va. — In a Sept. 11 petition for inter partes review by the Patent Trial and Appeal Board, Mentor Graphics Corp. takes aim at a patent directed to a method and apparatus for semiconductor testing, asserting that generating test data and identifying an outlier in the test data “was well known” in the art (Mentor Graphics Corporation v. Eric Paul Tabor, No. IPR2017-02094, PTAB).