Intellectual Property

Assuming without deciding that the discovery rule applies to extend the otherwise applicable 3-year statute of limitations on copyright infringement claims, this opinion hold that a plaintiff's damages are not limited to those suffered in the three years before suit was filed.  The statute of limitations bars untimely suit.  It does not govern damage recovery.  The Copyright Act's remedial provisions… Read More

Under 15 U.S.C. 1119, a court in a trademark infringement action has jurisdiction to invalidate a trademark application of a party to the action.  Lack of a bona fide intent to use a mark in commerce is a valid basis to challenge a trademark application. Read More

There are only two elements to a misappropriation of trade secrets claim:  the existence of a trade secret, and its unauthorized dissemination, disclosure or use.  It is not necessary for the plaintiff to prove it was damaged or the defendant was unjustly enriched.  Those issues are relevant only to an award of damages or restitution.  Even absent damages or enrichment,… Read More

This decision holds that Jack Daniel's Properties, Inc. v. VIP Products LLC (2023) 599 U.S. 140 effectively overruled prior 9th Circuit decisions to the extent that they held the Rogers v. Grimaldi (2d Cir. 1989) 875 F.2d 994 test exempts all expressive use of trademarks from trademark law.  Jack Daniel's held that the Rogers test does not apply when the… Read More

The trial court correctly denied Mattson's motion to compel arbitration of Applied's suit against it for violation of the Uniform Trade Secrets Act. Mattson had hired Lai away from Applied.  Lai's employment agreement with Applied contained an arbitration clause.  Mattson was not a party to that contract and could not enforce it on a equitable estoppel basis since Applied's claim… Read More

A choreographer stated actionable claims for direct and contributory infringement of his copyrighted choreographic work by defendant's virtual animation as part of a video game.  The complaint alleged a plausible similarity between his work's selection and arrangement of choreographic elements--body position, body shape, body actions, transitions, use of space, timing, pauses, energy, canon, motif, contrast, and repetition--and defendant's virtual animation.… Read More

In this action, plaintiff sought a declaration that its use of the trademark "Impossible" in connection with its food products didn't infringe upon defendant's federal trademark of the same word.  By a split decision, the 9th Circuit held that California could exercise personal jurisdiction over the defendant, a one-man LLC that for two years operated primarily from San Diego before… Read More

Plaintiff sued Disney for common law misappropriation of his story idea in making its animated file Zootopia.  This decision affirms a summary judgment for Disney.  Plaintiff had no direct evidence of copying.  It did not produce evidence sufficient to allow a reasonable inference of copying either.  The allegedly copied elements of plaintiff's story idea were not so unique as to… Read More

Perfect 10 Inc. v. Amazon.com, Inc. (9th Cir. 2007) 508 F.3d 1146 remains good law and applies to all types of websites.  It holds that "embedded" images on a website do not infringe a copyright in the embedded image because the embedding process merely provides instructions to the web browser to go to another website to download the image.  The… Read More

By registering a derivative work, an author registers all of the material included in the derivative work, including that which previously appeared in an unregistered, original work created by the author.  So plaintiff's registration of Chart B which included the elements of Chart A sufficed to obtain a copyright on the elements of Chart A.  Moreover, the author of an… Read More

Herbal sued defendant for Lanham Act violations, an intentional tort.  Accordingly, the court applied the Calder effects test to determine whether Arizona could assert personal jurisdiction over the defendant.  Defendants purposefully directed their tortious activities toward Arizona by selling to Arizona residents on an interactive website.  The alleged harm arose from those sales, among others.  And Herbal's pre-suit cease-and-desist letters… Read More

Federal legislation is presumed to apply only within the territorial jurisdiction of the United States unless Congress affirmatively and unmistakably instructs otherwise.  Absent such an instruction, the court must determine the focus of congressional concern underlying the legislation and then determine whether the conduct relevant to that focus occurred in the US or elsewhere.  Here, the focus of the Lanham… Read More

The district court abused its discretion in approving a $1.7 million fee award in a class action copyright infringement case in which class members received only $50,000 in a claims made settlement and no injunctive or other non-monetary relief.  While $1.7 million might be an actual assessment of fees by the hours times rate lodestar method, the resulting amount must… Read More

Plaintiff's use of Andy Warhol's silkscreen prints of defendant's photograph of Prince is not exempt from copyright infringement under the fair use doctrine.  While Andy Warhol transformed the photograph somewhat, the proposed use of his silkscreen as a magazine cover directly competed with defendant's initial use of the photograph for the same purpose.  The direct competition brought the use outside… Read More

Plaintiff had no viable claim against GoDaddy for selling a domain name to a third party purchaser after plaintiff failed to pay GoDaddy the renewal fee for that domain name.  GoDaddy was not liable under the Lanham Act because the purchaser rather than GoDaddy used the domain name in commerce.  Also, GoDaddy was immune from the claim under the Anticybersquatting… Read More

Following remand from the US Supreme Court, this decision holds that Unicolors' copyright registration is valid even though the application was incorrect in failing to comply with the "single unit" requirement because Unicolors did not know its application was inaccurate.  The decision rejects all of defendant's other attacks on the judgment, except for reducing damages by half to remove damages… Read More

A trade dress need not be associated in the public mind with a particular manufacturer or other provider in order to acquire secondary meaning and thus be protectible under the Lanham Act.  It is enough to show that the public thinks the product in that dress comes from a single source, even if the public cannot identify which source that… Read More

The trial court correctly denied defendants' Anti-SLAPP motion to strike plaintiff's claims under the UCL and CLRA based on defendants' allegedly false statements in releases or other statements and advertisements that Michael Jackson was the lead artist on all tracks in a posthumous CD.  Even if the defendants' statements were protected speech under CCP 425.16(e), plaintiff showed a probability of… Read More

Reversing a summary judgment in defendant's favor, this decision holds that defendant cannot claim a fair use defense to plaintiff's suit for infringement of its copyright on photos of an ephemeral lake in the Death Valley desert.  All four fair use factors weighed against defendant.  Defendant used the pictures for a commercial purpose--to profit from its article that included the… Read More

Under Fed. R. Civ. P. 4(k)(2), a plaintiff may establish personal jurisdiction over a foreign defendant by (a) alleging a federal law claim against the defendant, (b) showing that the defendant is not subject to personal jurisdiction in any state, and (c) showing that exercise of jurisdiction over the defendant is consistent with due process, considering the defendant's contacts with… Read More