Posts Tagged: "central district of california"

Earlier today, the United States Court of Appeals for the Federal Circuit issued a decision in a standard essential patent (SEP) appeal involving Ericsson and TCL Communication Technology—a closely watched case that many hoped would produce some case law relating to what constitutes a FRAND (fair, reasonable and non-discriminatory) offer of a licensing royalty rate relative to SEPs. See TCL Communication Technology Holdings Ltd. V. Telefonaktiebolaget LM Ericsson, No. 2018-1363, 2018-1732 (Fed. Cir. Dec. 5, 2019). Because the Federal Circuit determined that Ericsson was deprived of its constitutional right to a jury trial, the district court decision was reversed, and the case remanded for further proceedings. However, the question of whether Ericsson’s offers to TCL qualified as FRAND offers were not reached by the Federal Circuit.

This week in Other Barks & Bites: WIPO launches dispute resolution service for Chinese domain names; Morrison Foerster report shows that IP litigation costs are increasing as the number of IP matters being handled are decreasing; the Federal Circuit issues precedential decisions upholding claim construction findings at the ITC and overturning a district court jury verdict finding invalidity for being unsupported by record evidence; the Second Circuit clarifies when profits can be awarded in trademark cases; Uber IP transfer creates $6.1 billion tax break for the company; major football associations call for crackdown on Saudi piracy service; OPPO inks patent agreements with Intel and Ericsson; and Broadcom acquires Symantec’s enterprise security business.

On December 28, 2018, the limited liability company representing famed Seattle-area grunge rock band Nirvana sued clothing designer Marc Jacobs and fashion retailers Neiman Marcus and Saks Fifth Avenue in the U.S. Federal District Court for the Central District of California. At the center of the lawsuit are copyright and trademark infringement allegations regarding the use of Nirvana’s “smiley face” logo on a line of designer clothing made by Marc Jacobs. Nirvana alleges that Marc Jacobs has used the band’s common law trademarks and infringed the band’s copyright in the smiley face logo in a misleading way in order to make it appear that Marc Jacobs’ “Bootleg Redux Grunge” clothing line is endorsed by or somehow associated with Nirvana. Nirvana first licensed the use of the smiley face logo, designed by deceased Nirvana front man Kurt Cobain in 1992, and it has been continuously used to identify Nirvana’s music and licensed merchandise since.

Christopher Gordon, under the pseudonym “Randall,” released the Honey Badger movie in 2011 and the 3:20-long video has been viewed more than 89 million times. Gordon filed trademark applications to cover the use of the video’s well-known phrase Honey Badger Don’t Care in various classes including audio books, greeting cards, mugs and clothing. In 2012, Gordon hired a licensing agent who contacted American Greetings, the parent company of co-defendant Papyrus-Recycled Greetings, to discuss a potential licensing deal but those parties never agreed to a deal. Beginning in June 2012, the defendants released a series of seven greeting cards, including birthday, Halloween and election cards, which made use of the trademarked phrase Honey Badger Don’t Care and another well-known phrase from the video, Honey Badger Don’t Give A S—.

“While the jury’s $130 million verdict is significant and may sound large in the abstract, it may not be enough without enhancement to deter infringing conduct given the context of this case,” Judge Olguin wrote. Evidence presented at trial shows that the infringing products sold by Cochlear generated $1.8 billion in revenues. Cochlear had publicly stated in a 2016 annual report that the jury’s verdict won’t disrupt Cochlear’s business or U.S. customers.

REAL argued in its petition that step two of the Alice test used to determine invalidity under Section 101 requires questions of fact that were never asked by the lower court. To invalidate without asking those questions contradicts the Federal Circuit’s recent holdings in Berkheimer v. HP and Aatrix Software v. Green Shades Software. REAL’s appeal to the Federal Circuit was decided by a panel including Circuit Judges Alan Lourie, Evan Wallach and Kara Stoll, a trio where the majority has held that step two of Alice is a pure question of law, which is a misapplication of the Alice standard. REAL further contended that both the district court and the Federal Circuit disregarded the factual record in their Alice analysis; that the patents-in-suit claim patentable improvements to computer user interface technology; and that the district court found that there were material facts in dispute while also finding that the claims were well-understood, routine and conventional.

The Court of Appeals for the Ninth Circuit recently issued an opinion in Skidmore v. Led Zeppelin, which vacated-in-part a judgment out of the Central District of California that Led Zeppelin’s hit classic rock song “Stairway to Heaven” was not substantially similar to “Taurus,” a song written by the late songwriter Randy Wolfe, a member of the band Spirit. The case was remanded back to the district court after the appellate court found that certain instructions given by the district court to the jury were erroneous and prejudicial.

U.S. District Judge Stephen V. Wilson of the Central District of California recently issued an order granting-in-part and denying-in-part a motion for summary judgment made by Detroit, MI-based automaker General Motors in a copyright case brought by a Swedish artist who painted a street mural which GM used in its marketing materials. Although Judge Wilson granted summary judgment in favor of GM on the plaintiff’s Digital Millennium Copyright Act (DMCA) and punitive damages claims, the artist’s claim for copyright infringement has been allowed to proceed to trial.

In October 2016, the creators of the classic mockumentary film This Is Spinal Tap filed suit against a group of defendants including the French mass media conglomerate Vivendi S.A. alleging that Vivendi engaged in anticompetitive business activities to defraud the Spinal Tap creators of profits earned from the movie. On August 28th of this year, U.S. District Judge Dolly Gee of the Central District of California allowed the case to move forward by denying a motion filed by defendants to dismiss the case based on the economic loss rule, a rule that otherwise operates to require recovery of damages under contract rather than for an action for fraud. Judge Gee also determined that copyright reversion claims presented a sufficiently ripe controversy for consideration by the court. 

Artist Matt Furie, the creator of the Pepe the Frog anthropomorphic frog character that has gained notoriety for its use in Internet memes, filed a complaint for copyright infringement in the Central District of California. The suit targets a pair of companies managed by far-right conservative radio show host Alex Jones over the use of the Pepe character over the sale of a poster including a likeness of Pepe alongside political figures from the alt-right and the 2016 presidential campaign of Donald Trump.

This study uncovered several shocking revelations. First, 12.64% of PTAB judges were appointed with less than 5 years of experience prior to their appointment as APJs (i.e., 5 years or less removed from graduating from law school), while some PTAB judges were appointed with as little as 2 years of experience. Indeed, 7.47% of APJs had 4 or less years of experience when they were appointed to the PTAB… There were zero federal district court judges appointed with 10 years or less experience, while 46.55% of PTAB judges were appointed with 10 years or less experience… This would mean that 46.55% of PTAB judges were appointed while they were still at best senior associates. Worse, 4.60% of PTAB judges were appointed with 3 or fewer years of experience, which means those 4.60% of PTAB judges were appointed at a time when they were only at a junior associate level.

So uncreative did Judge Michael Fitzgerald find Taylor Swift’s 2014 hit Shake It Off, he dismissed a copyright infringement case filed against her. In his opinion Judge Michael Fitzgerald explained the allegedly infringing lyrics used by Swift lacked even the modest level of creativity required for copyright protection… “The concept of actors acting in accordance with their essential nature is not at all creative; it is banal,” Fitzgerald worte. “In the early 2000s, popular culture was adequately suffused with the concepts of players and haters to render the phrases ‘playas … gonna play’ or ‘haters … gonna hate,’ standing on their own, no more creative than ‘runners gonna run,’ ‘drummers gonna drum,’ or ‘swimmers gonna swim.’”

The technology covered by the ‘073 patent has been incorporated into the series of Bakugan rollable toys developed by Spin Master and released in 2007 in conjunction with the Japanese-Canadian anime adventure series Bakugan Battle Brawlers. According to Spin Master’s complaint, the Bakugan toy series has been a major success for the company, earning $1 billion in sales in just over a decade. Bakugan is a combination of the Japanese words for “to explode” (baku) and “sphere” (gan) and Spin Master’s toys were designed to be spherical, rollable toys which would “explode” into a character when the toy came into contact with a magnetic component. Spin Master’s toys remained popular through a number of Bakugan spin-off series and the company planned to reboot the toy brand for release along with a new anime series to be released in the 2019-20 time frame.

TiVo files patent lawsuits, the latest steps TiVo has taken in the hopes of resolving the renewal of a long-term licensing agreement that TiVo has already has already finalized with other major pay-television providers in the United States… TiVo’s recent litigation campaign against Comcast stems back to an unresolved licensing agreement that expired in April 2016 and which TiVo has attempted to renew with the major American pay-TV provider. Rovi first signed licensing agreements with the top pay-TV providers in the U.S., including Comcast, Dish Network, DirecTV and Time Warner, back in 2003 and 2004 with each deal lasting for a period of 12 years. In 2015 and 2016, around the same time that Rovi acquired TiVo for about $1.1 billion, the company began proactively engaging in licensing talks, again striking long-term deals like 10-year agreements with both AT&T and Dish. Of the top 10 pay-TV providers in the United States, Comcast is the last holdout who has not signed a licensing deal with TiVo.