U.S. District Judge Mary Ann Vial Lemmon of the Eastern District of Louisiana entered a preliminary injunction order against Jolie Home, LLC and other defendants accused of trademark infringement by Annie Sloan Interiors, the U.K.-based makers of Annie Sloan® Chalk Paint®. The preliminary injunction orders the defendants to cease their “reverse passing off” of Annie Sloan® products as Jolie Home products and their distribution of advertisements and labels for Jolie Home paints which claim to use the same formula as Annie Sloan® Chalk Paint® and used the trademarked phrase “chalk paint” in a non-fair use manner.
In Berkheimer and Aatrix, the Federal Circuit indicated that although patent eligibility under Section 101 is ultimately a question of law, the determination may have factual underpinnings that, at least in some cases, render it inappropriate for motions to dismiss or for summary judgment… However, following Berkheimer and Aatrix, the Federal Circuit has itself affirmed numerous Section 101 rulings that were made at the dismissal or pleadings stage. This article provides a summary of recent district court decisions granting Rule 12(b)(6) motions to dismiss under Section 101.
The Qualcomm decision is unique in that it appears to be the first decision to require a SEP holder to license its patented technology to its competitors, and not just its downstream customers, on FRAND terms. This decision casts doubt on the longstanding practice, common in industries such as the telecommunication and automotive industries, in which SEP holders seek to secure “FRAND” licenses with downstream companies that make finished products, while refusing to license (or licensing on non-FRAND terms) those same SEPs to their competitors or other companies further up the supply chain (such as component suppliers). The decision also emphasizes U.S. courts’ focus on the express language of SSOs’ IPR policies and the willingness to review the SSO guidelines in interpreting the agreements SEP holders enter into with SSOs. In this regard, the decision may bode well for SEP implementers, given the court’s broad understanding of what it means to “practice” a relevant standard and its view that SEP holders’ FRAND obligations extend to all potential licensees, irrespective of their position in the supply chain.
On Sunday, September 30th, U.S. District Judge Alison J. Nathan of the Southern District of New York signed a memorandum opinion and order that was officially entered the following day in a trademark case brought by pop music superstar Beyoncé Giselle Knowles-Carter against Feyonce, Inc., a developer of merchandise marketed to engaged people using the brand name Feyoncé. Although the court found no dispute that the mark “FEYONCÉ” was chosen with the intent to capitalize on the famous “BEYONCÉ” mark, Beyoncé’s motion for a permanent injunction couldn’t be granted on summary judgment because there remains a genuine dispute of material fact regarding whether a jury would find that a rational consumer would mistakenly believe an affiliation between the two brands.
District Judge Stefan Underhill of the District of Connecticut issued a ruling on cross-motions for summary judgment in a copyright case involving the cult horror film Friday the 13th. Judge Underhill’s ruling determined that Victor Miller, the screenwriter who wrote the script for the movie, did not produce the script as a work made for hire, thus preserving his ability to claim ownership of the copyright for the script.