Intellectual Property

A medical practice's summary of Relative Value Unit data for all its employees for several years was a trade secret.  Though the RVU system was a well-known system for evaluating physician efficiency and so no trade secret, each employee's annual RVU production was not publicly known and so it could be a trade secret.  The historical RVU productivity data had… Read More

CCP 2019.210 provides that in a trade secret  misappropriation case under Civ. Code 3426, before commencing discovery relating to the trade secret, the party alleging the misappropriation shall identify the trade secret with reasonable particularity.  This decision holds that the plaintiff cannot wait to raise a new alleged trade secret in opposition to a summary judgment motion directed towards its… Read More

California's Uniform Trade Secrets Act (Civ. Code 3426.7) preempts other remedies for misappropriation of trade secrets such as a claim for unfair competition under B&P Code 17200. Read More

After negotiating unsuccessfully to buy plaintiff or "acqui-hire" its key employees, Apple enticed those key employees to quit plaintiff and go to work for Apple.  Held, summary judgment for Apple affirmed.  Plaintiff's fraud claim was based on three promises Apple made during negotiations.  Promises are actionable as fraud only when, at the time the promise is made, the promisor does… Read More

The district court correctly dismissed this copyright infringement suit against the Polish owner of a Polish porn website for lack of personal jurisdiction.  To establish specific personal jurisdiction under the Calder "effects" test, the plaintiff must show (1) the defendant purposefully availed himself of the privileges of conducting activities in the forum or purposefully directed his activities to the forum,… Read More

Reversing the district court's judgment and permanent injunction, this decision finds that Qualcomm's patent licensing practices do not violate the Sherman Act.  The district court erred in finding anticompetitive harm from the effect Qualcomm's licensing practices had on cell phone manufacturersp--a market in which Qualcomm did not compete--rather than on rival chip manufacturers with which Qualcomm did compete.  Qualcomm's practice… Read More

A generic name—the name of a class of products or services—is ineligible for federal trademark registration. However, when the generic name is combined with a generic a generic Internet-domain name suffix like “.com,” the combined "generic.com" name is generic and ineligible for trademark protection only if the combined term, taken as a whole signifies a class of goods or services… Read More

Though the federal Copyright Act preempted the California Resale Royalty Act insofar as it granted artists a right to royalties on the resale of their work, it did not preempt the CRRA's attorney fee provision, which was not inconsistent with the Copyright Act.  Read More

Reverse passing off of a physical product (here, car tires) violates the Lanham Act even if that product embodies the plaintiff’s intellectual property. Read More

A patentee may recover lost profits suffered in foreign countries as damages in a patent infringement action brought against a defendant that shipped parts from the United States for assembly into an infringing product in a foreign country. Read More

Inter partes review of challenges to a patent before the Patent Office does not violate Article III because a patent grant falls within the public rights doctrine.   Read More

Once inter partes review is commenced by the Patent Office, the proceeding must decide the patentability of all of the claims the petitioner has challenged. Read More

District court did not abuse its discretion in issuing injunction barring defendant from altering copyrighted movies by stripping their content access protections and removing “objectionable” content, and then making the unauthorized, edited version available to its customers online.   Read More

In the trademark context, “reverse confusion” is a legal theory, not a separate claim, and so it can be raised in opposition to summary judgment even though it was not separately alleged in the complaint.  Read More

The prohibition on trademarking offensive or disparaging marks—here, an Asian dance rock band called “The Slants”—violated the First Amendment, since the prohibition serves no substantial governmental interest and is not narrowly drawn.  Read More

A patentee loses patent rights in a product when it sells the patented product, even if the sale contract restricts the buyer’s use or resale of the product; contract law, not patent law, provides the remedy for any breach of those restrictions. Read More

For purposes of the venue statute governing patent cases, a corporation “resides” only in its state of incorporation.  Read More

“Google” remains a valid trademark designating the source of a particular search engine despite the word’s common use as a verb to mean conducting any internet search.  Read More

The federal Copyright Act preempts plaintiffs’ claims under California's right to publicity law arising from non-commercial use and publication of copyrighted photographs of plaintiffs taken by third parties.  Read More

A patent infringer cannot avoid liability for damages during the 6-year statutory limitations period by raising an equitable defense of laches.  Read More