Intellectual Property

Petrella v. Metro-Goldwin-Mayer, Inc. (2014) 134 S.Ct. 1962 did not abrogate the rule that the 3-year statute of limitations for copyright infringement in modified by the discovery to allow suit within 3 years of the date when the plaintiff first knew or reasonably should have known of the infringement. Read More

On remand after reversal of an order dismissing the complaint (Sicre De Fontbrune v. Wolfsy (9th Cir. 2016) 838 F.3d 992), this decision reverses a summary judgment in defendant's favor refusing to enforce a French judgment for "astreinte" damages for using photos of Picasso paintings infringing plaintiff's copyright in the photos.  The French judgment that plaintiff sought to enforce was… Read More

The right of a trademark owner to control the distribution of its trademarked product does not extend beyond the first sale of the product, and trademark rights are “exhausted” as to a given item upon the first authorized sale of that item.  This first sale doctrine applies not only to the resale of the product in unmodified form by the… Read More

Under the Madrid Protocol implemented in 15 USC 1141 et seq, and under 15 USC 1057, the holder of a trademark registered in a foreign country can obtain registration of the trademark in the United States as well, and obtain the benefit of a constructive use date pegged to the date of the foreign registration or application for US registration. … Read More

A musician's use of an eight note sequence at a steady rhythm involved only common musical elements and was not copyrightable.  Hence, the district court correctly granted JMOL against the musician's claim that the defendant infringed his copyright by copying the first six of his eight note repeated musical figure in her song. Read More

Under 17 USC 411(b), a certificate of registration of a copyright is effective and satisfies the registration-before-suit requirement of 411(a) even if the certificate contains inaccurate information unless the applicant submitted the information with knowledge it was inaccurate and Register of Copyrights would have refused registration had it known of the inaccuracy.  Reversing the Ninth Circuit (Gold Value Int'l Textile,… Read More

Plaintiff voluntarily dismissed its misappropriation of trade secrets claim, but continued to prosecute six other causes of action against defendant.  Defendant moved unsuccessfully for an attorney fee award under Civ. Code 3426.4 which allows fee awards for trade secrets claims brought in bad faith.  Defendant's appeal from the order denying its fee motion was dismissed.  The order was not a… Read More

The de minimis copying test in a copyright infringement action relates only to the degree of copying, not to the extent of the infringement by minimum use of a copyrighted work.  So, here, defendant could  not raise a de minimis defence since it had completely copied plaintiff's copyrighted photograph of the Indianapolis skyline.  Its copying was total, not de minimis. … Read More

Disney entered into a contract with Gilkyson for him to compose the song "The Bare Necessities."  The contract provided that the song would be a work-for-hire to which Disney would own the copyright.  Disney was to pay Gilkyson $1,000 up front, plus 5 cents for each sheet music copy sold and "50% of the net amount received by our music… Read More

To validly register a trademark with the USPTO, the applicant must file a declaration attesting that the mark is in use in commerce, by which is meant bona fide use of the mark in the ordinary course of trade, and not made merely to reserve a right in a mark.  Use in commerce requires both actual use and display of… Read More

This decision refuses to overrule the assignor estoppel doctrine which prevents the assignor of a patent from challenging the patent's validity if doing so would contradict the assignor's express or implied warranty that the patent was good at the time the assignor sold it.  However, the estoppel does not apply when the assignment is made before a patent application is… Read More

Oracle breached its contract with HP by announcing that its next product releases would not be compatible with HP's Itanium computers.  Following the first phase of trial in this case, the trial court concluded that the parties' contract required Oracle to offer Itanium-compatible versions of its product releases.  Oracle then announced that it would release Itanium-compatible versions, but also announced… Read More

Having agreed to maintain its strategic relationship with HP and support of their shared customer base, by continuing to offer its product suite on HP platforms, Oracle six months later announced that its next product releases would not be available for HP computers.  This decision holds that the announcement was a present breach of the parties' agreement, not an anticipatory… Read More

To settle disputes that arose from Oracle's hiring HP's former CEO, the two signed a settlement agreement containing a "reaffirmation" clause that  stating each company’s commitment to their strategic relationship and support of their shared customer base, and that Oracle "“will continue to offer its product suite on HP platforms.”  This lengthy opinion holds that the quoted words committed Oracle… Read More

The Computer Fraud and Abuse Act of 1986 (CFAA), which subjects to criminal liability anyone who “intentionally accesses a computer without authorization or exceeds authorized access.” 18 U. S. C. §1030(a)(2). " Exceeds authorized access” is defined to mean “to access a computer with authorization and to use such access to obtain or alter information in the computer that the… Read More

In a reverse confusion trademark infringement case, the senior trademark owner claims that customers are confused by the junior infringer into thinking that the senior's goods emanate from the junior because of its higher public profile.  Here, IronHawk was the senior user of SmartSync for its file compression and transfer software.  It claimed that Dropbox's use of Smart Sync on… Read More

Google's use of 11,000 lines of programming code that Oracle's subsidiary Sun Microsystems had prepared and copyrighted was a fair use and thus not actionable infringement of Oracle's copyright.  The copied lines were "method calls," essentially a user interface that allows programmers to designate the standard subroutines they wish their program to invoke to perform certain functions.  Sun had adopted… Read More

The Ninth Circuit applies the abuse of discretion standard of review to review a summary judgment in a trademark infringement case if the summary judgment is granted on equitable grounds such as unclean hands, laches or acquiescence. Read More

The district court correctly granted summary judgment to plaintiff on its copyright infringement claims arising from defendants' copying its copyrighted fabric designs.  To be copyrightable, a work must be original, that is not copied.  But unlike a patent, a copyright does not require that the original work be unlike prior art.  Here, plaintiff's floral fabric coloring design was independently created,… Read More

The federal Defend Trade Secrets Act of 2016 (18 USC 1831 et seq.) proscribes the wrongful acquisition, disclosure or use of a trade secret without the owner's permission.  Unlike the Uniform Trade Secrets Act, the DTSA does not contain a provision expressly disallowing claims for continued unpermitted use of the trade secret after the DTSA's enactment, if the use began… Read More