Case Summaries

Trade Secrets

[09/19] Niemi v. NHK Springs Co., Ltd.
In a suit for misappropriation of trade secret, breach of contract, and promissory estoppel involving a method of manufacturing stabilizer bars for automobiles, summary judgment for defendant-corporation and dismissal ruling in favor of its parent company are affirmed in part as to the dismissal ruling based on a lack of personal jurisdiction, but reversed in part where there was sufficient evidence to create genuine issues of material fact on trade secret and promissory estoppel claims.

[09/09] Asset Marketing v. Gagnon
In a software copyright and trade secret case, summary judgment for defendant on the grounds of an implied license to retain, use and modify the software was affirmed where: 1) defendant requested creation of the software programs; 2) plaintiff created the programs for defendant and delivered them to defendant by installing them on defendants' computers and storing source code for the programs on defendant's premises; and 3) defendant manifested an intent that plaintiff would maintain and modify the programs.

[08/19] In Re Cygnus Telecomm. Tech., LLC, Patent Litig.
In a patent dispute over computerized callback systems designed to lower the cost of overseas telephone calls, summary judgment of invalidity and dismissal of trade secret appropriation claims are affirmed where: 1) plaintiff was not collaterally estopped from appealing the invalidity finding despite not having named all defendants in its appeal; 2) plaintiffs produced no evidence disputing a statement by the inventor regarding the date on which he had reduced the invention to practice; 3) sales of a device that embodied the patent claims subjected the patent to invalidation despite that device's not being ready for sale on a commercial scale; and 4) the statute of limitations barred plaintiff's claim for misappropriation of trade secrets.

[07/29] In re: Carco Elec.
In a dispute between competing bidders in the acquisition of debtor's production facilities during bankruptcy proceedings, an appeal from a protective order limiting the disclosure of the bidders' respective trade secrets during discovery is dismissed for lack of appellate jurisdiction where the order was neither final nor appealable under the limited scope of the collateral order doctrine.

[05/15] Topps Co., Inc. v. Cadbury Stani S.A.I.C.
In an action alleging breach of contract and misappropriation of trade secrets involving a chewing gum licensing agreement, summary judgment for defendant is reversed and remanded where: 1) the licensing agreement was ambiguous as to defendant's entitlement to continual usage of trade secrets after the agreement's terminate date; and 2) extrinsic evidence did not weigh overwhelmingly in defendant's favor to permit a resolution of the agreement's ambiguity by summary judgment.

[05/12] Othentec Ltd. v. Phelan
In an action raising claims under the Virginia Computer Crimes Act and the Virginia Uniform Trade Secrets Act, summary judgment for defendants is affirmed where: 1) plaintiffs failed to present evidence that defendant had used a computer to withdraw funds he was not authorized to withdraw for an illegal or unauthorized purpose; and 2) plaintiffs did not present sufficient evidence to show that defendants were using plaintiffs' trade secrets in their manufacturing process.

[03/27] TSMC N. Am. v. Semiconductor Mfg. Int'l Corp.
In an action seeking to enjoin proceedings instituted in Beijing People's High Court in China pursuant to choice of law and forum selection provisions in a purported "settlement agreement" between the parties, denial of a motion for an antisuit injunction is affirmed in light of international comity and judicial restraint considerations.

[02/29] Heritage Mktg. & Ins. Servs., Inc. v. Chrustawka
In action for breach of contract, conspiracy to defraud, defamation, tortious interference with economic advantage, and violation of the California Trade Secrets Act, summary adjudication on five causes of action based on the expiration of the statute of limitations is affirmed as Code of Civil Procedure section 351 did not toll the various limitations periods.

[02/20] CytoDyn, Inc. v. Amerimmune Pharm., Inc.
In suit claiming unjust enrichment based on the alleged misappropriation of plaintiff's patents and trademarks, award of attorney's fees is reversed where the trial court erred in awarding attorney's fees under a provision of the Uniform Trade Secrets Act, as the complaint cannot be read as alleging a claim for misappropriation of trade secrets. The court also erred in concluding that attorney's fees were recoverable under the indemnification clause of a licensing agreement.

[01/14] Heritage Provider Network, Inc. v. Superior Ct. (Eastland Med. Group, Inc.)
In case arising from suit for contract- and trade secret-related causes of action, petition for writ of mandate challenging motion to stay litigation pending arbitration is granted where Code of Civil Procedure section 1281.4 mandates a stay of judicial proceedings pending completion of the arbitration in these circumstances.

[01/10] Patriot Homes, Inc. v. Forest River Housing, Inc.
In a suit alleging copyright infringement and violation of the Computer Fraud & Abuse Act after a modular home designer began using the same designs as its competitor, preliminary injunction against defendant prohibiting it from misappropriating plaintiff's copyrights, confidential information, trade secrets, and computer files is vacated and remanded where the injunction lacked specificity as required by Federal Rule of Civil Procedure 65(d).

[11/19] GO Computer Inc. v. Microsoft Corp.
In a suit alleging trade secret theft and antitrust injuries committed by defendant Microsoft that purportedly drove "PenPoint"-plaintiffs out of business, dismissal of the complaint on statute of limitations grounds is affirmed over multiple arguments, including plaintiffs' claim that fraudulent concealment delayed the ticking of the clock.

[11/15] Navigant Consulting Inc. v. Wilkinson
In an action brought against two of plaintiff-consulting company's former employees alleging, inter alia, breach of fiduciary duty, breach of contract, and misappropriation of trade secrets, a judgment against defendants is affirmed with the exception of an award of attorney's fees against one defendant over claims of error regarding: 1) the sufficiency of the evidence; 2) jury instructions; 3) erroneous admission of evidence from plaintiff's controller; and 4) duplicative damages.

[10/12] San Jose Constr., Inc. v. S.B.C.C., Inc.
In an action by plaintiff-construction company against its former employee and his new employer, summary judgment for the new employer is reversed as, contrary to the ruling below, there were triable issues of fact with regard to causes of action for misappropriation of trade secrets, intentional interference with prospective economic advantage, and unfair competition.

[09/20] Vision Point of Sale v. Haas
In an action arising from use of trade secrets which resulted in a certified question regarding procedural time extensions, judgement is reversed where, in determining whether good cause exists under Rule 183 to support an extension of time allowing a party to comply with a deadline set forth in our rules, the circuit court may not take into consideration facts and circumstances in the case that go beyond the reason for noncompliance.

[09/17] General Universal Sys. Inc. v. HAL Inc.
In an action raising state and federal claims for stealing proprietary software, summary judgment for defendants is affirmed as: 1) in the context of statutes of limitations, trade secret misappropriation should not be treated as a continuing tort under Texas law; 2) thus, plaintiff's claim of trade secret misappropriation against certain defendants was time barred; and 3) the court of appeals' remand in a prior opinion did not include any claims against customer-defendants, and summary judgment for them based on the mandate rule was proper.

[08/23] Yield Dynamics, Inc. v. TEA Sys. Corp.
In dispute with former employee over computer code and alleged trade secrets, judgment for defendants is affirmed as plaintiff failed to establish that the code constituted a trade secret.

[07/26] Dorel Juvenile Group, Inc. v. DiMartinis
In a suit involving an employee's move to a competitor, appeal from a denial of a preliminary injunction is dismissed as moot where the end date for the requested injunction had already passed, thus the court could not grant any meaningful relief.

[07/12] SL Montevideo Tech., Inc. v. Eaton Aerospace, LLC
In an action arising when defendant obtained a redesigned motor from a supplier other than plaintiff after plaintiff had supplied defendant with customized motors for several years, dismissal of plaintiff's breach of contract claim is affirmed as plaintiff failed to present evidence from which a reasonable jury could find that defendant breached a Proprietary Information Agreement (PIA) and, absent misuse of protected proprietary information, the PIA did not bar defendant from using the motors it purchased, from modifying those products, or from seeking a replacement vendor when plaintiff walked away from their on-going relationship.

[05/24] Incase Inc. v. Timex Corp.
In a suit by a manufacturer of plastic packaging products against a watch and electronics manufacturer involving claims of misappropriation of trade secret, unfair trade practices, breach of contract, and implied contract: 1) judgment as a matter of law (JMOL) on the trade secret claim is affirmed where there was no evidence to support plaintiff's argument that it took reasonable steps to preserve the secrecy of the design in question; 2) JMOL on the implied contract claim is affirmed where plaintiff offered no evidence as to the actual value of the services provided; 3) denial of JMOL on the express contract claim is affirmed where there was sufficient evidence for the jury to find that a contract existed; 4) there was no evidence of coercion, fraud, abusive litigation, or similar behavior by defendant, thus the judge was correct to deny punitive damages for plaintiff on the unfair trade practices claim; and 5) the district court did not abuse its discretion in denying defendant's motion for a new trial based on unfair surprise.

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Trade Dress

[11/05] E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc.
In an action brought by the operator of a strip club in Los Angeles against the producer of a video game in the "Grand Theft Auto" series claiming, inter alia, that the game's depiction of a strip club called the "Pig Pen" infringed its trademark and trade dress associated with the "Play Pen", summary judgment for defendant-game producer is affirmed where: 1) modification of plaintiff's trademark was not explicitly misleading and was thus protected by the First Amendment; and 2) the First Amendment defense applies equally to plaintiff's state law claims as to its Lanham Act claim.

[05/29] UT Lighthouse Ministry v. Found. for Apologetic Info. and Research
In an action claiming trademark infringement, unfair competition, and cybersquatting, summary judgment for defendant is affirmed where: 1) trademark infringement and unfair competition claims failed as plaintiff did not show that "Utah Lighthouse" was protectable, that defendant's use was in connection with any goods or services, and that defendant was likely to cause confusion among consumers as to the source of goods sold on its online bookstore; 2) defendant lacked a bad faith intent to profit from the use of plaintiff's trademark in several domain names under the Anti-Cybersquatting Protection Act (ACPA); and 3) defendant's website met safe harbor conditions of the ACPA since it was a parody.

[12/26] McNeil Nutritionals, Inc. v. Heartland Sweeteners, LLC
In a trade dress infringement action brought by the marketer of the artificial sweetener Splenda against defendants, who package and distribute sucralose as store brands to a number of retail grocery chains, alleging their product packaging is confusingly similar to Splenda's, denial of plaintiff's motion for a preliminary injunction is affirmed in part, but reversed in part as to certain boxes and bags where plaintiff demonstrated a likelihood of success on the merits with respect to the third element of trade dress infringement, as there was a likelihood of confusion between those products' trade dresses and the analogous Splenda trade dress.

[09/12] General Motors Corp. v. Urban Gorilla, LLC
In trademark dispute over steel "body kits" designed to make a truck look like a military-style vehicle, denial of plaintiff GM's motion for preliminary injunction is affirmed where the district court did not abuse its discretion in finding that GM failed to make a strong showing of a likelihood of success on the merits that the "body kits" infringe upon and dilute GM's trade dress rights in its Hummer line of vehicles.

[08/22] Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc.
In dispute arising out of distributorship agreement and competing adhesive products for floor coverings, judgment for defendants is affirmed over claims that the district court erred in granting: 1) partial summary judgment for defendants on plaintiff's claims of trademark infringement and unfair competition; 2) summary judgment in favor of defendants on plaintiff's claims of breach of confidential relationship, breach of fiduciary duty, fraudulent concealment, fraud, and negligent misrepresentation; and 3) granting defendants' renewed motion for judgment as a matter of law on plaintiff's trademark and unfair competition claims, due to a lack of evidence establishing plaintiff's damages.

[07/30] Magic Kitchen LLC v. Good Things Int'l Ltd.
In suit alleging dress infringement, unfair competition, and false advertising regarding a kitchen device known as the "Tartmaster," order granting directed verdict for defendants on trade dress claims, and finding for defendants on other claims are affirmed as there was no error or abuse of discretion.

[06/29] Hansen Beverage Co. v. Nat'l Beverage Corp.
Grant of a preliminary injunction prohibiting defendant from infringing upon the trade dress of Hansen Beverage Company's line of "Monster" energy drinks with defendant's line of "Freek" energy drinks is reversed where the district court abused its discretion in determining that plaintiff was likely to succeed on the merits, as a finding of a likelihood of confusion was clearly erroneous.

[03/28] ITC Ltd. v. Punchgini, Inc.
Summary judgment for defendants on claims of trademark infringement, unfair competition, and related false advertising is reversed in part pending response of the New York Court of Appeals to the following certified questions: 1) Does New York common law permit the owner of a famous mark or trade dress to assert property rights therein by virtue of the owner's prior use of the mark or dress in a foreign country?; and 2) If so, how famous must a foreign mark be to permit a foreign mark owner to bring a claim for unfair competition?

[11/27] Audi AG v. D'Amato
In a case arising from defendant's use of the domain name www.audisport.com to sell goods and merchandise displaying Audi's name and trademarks, summary judgment, injunctive relief, and an award of attorneys' fees to Audi on trademark, trade dress, and AntiCybersquatting Consumer Protection Act (ACPA) claims are affirmed where: 1) there was a likelihood of confusion for purposes of trademark infringement, and defenses to the claim including laches, consent, and fair use, failed; 2) trademark dilution was proven; 3) a finding that defendant violated the ACPA was proper; 4) injunctive relief was warranted; and 5) given his bad faith use of counterfeit marks, the district court did not abuse its discretion in awarding attorneys' fees under 15 U.S.C. section 1117(a).

[10/25] Gen. Motors Corp. v. Lanard Toys, Inc.
In a trademark and trade dress infringement suit filed against a toy company by GMC involving a series of toy vehicles resembling GMC's Hummer, summary judgment for GMC is affirmed where: 1) despite the district court's failure to adequately discuss the Frisch factors, summary judgment was appropriate on the trademark infringement claim due to the weight of the factors in favor of a finding a likelihood of confusion; 2) GMC established that there were no material issues of fact as to any of the three elements of trade dress infringement; and 3) denial of summary judgment on laches and estoppel defenses was proper.

[06/15] HI Ltd. P'ship v. Winghouse of Fla., Inc.
Judgment against plaintiffs on their claims of trade dress infringement, trade dress dilution, and unjust enrichment, and judgment for one counter-claimant that a settlement agreement barred plaintiffs from bringing the present suit, are affirmed, as plaintiffs' claims fail as a matter of law. Where plaintiffs failed to file a postverdict motion regarding the settlement, they cannot raise it on appeal.

[03/21] In re Slokevage
A decision of the United States Patent and Trademark Office sustaining a refusal of an examiner to register a trade dress mark for clothing is affirmed where substantial evidence supported a finding that the trade dress was product design and that the trade dress was not unitary.

[01/18] Shelby v. Superformance Int'l, Inc.
Appeal from a partial summary judgment grant for defendant is dismissed in a trademark and trade-dress case involving a car manufacturer and the manufacturer of replica vehicles where plaintiff's appeal was moot.

[08/08] Bretford Mfg. Inc. v. Smith Sys. Mfg. Corp.
In a trademark dispute concerning a computer table, defendant did not engage in "reverse passing off" when it incorporated some of plaintiff's hardware into a sample table that it presented to potential purchasers.

[01/13] TUMBLEBUS INC. v. CRANMER
A preliminary injunction issued against defendant, restricting her use of a mark's trade dress during the pendency of an underlying infringement action, is reversed where the district court failed to make any findings on the record as to why plaintiff's mark was distinctive.

[10/15] CREATIVE COMPUTING v. GETLOADED.COM
In a suit involving trade dress and copyright infringement claims, judgment for plaintiff is affirmed where defendant violated the federal Computer Fraud and Abuse Act while operating its website.

[09/20] MILLER YACHT SALES, INC. v. SMITH
Dismissal of plaintiff's suit, alleging trade-dress infringement and tortious interference, for lack of personal jurisdiction is reversed were defendant had sufficient contacts with New Jersey.

[09/13] GATEWAY INC. v. COMPANION PRODS.
Defendant's product infringed plaintiff-Gateway's black and white cow and spots trademark where the spots have acquired distinctiveness through secondary meaning, is not functional, and is entitled to protection.

[08/17] SOCIETE DES HOTELS MERIDIEN v. LASALLE HOTEL OPERATING P'SHIP
Dismissal of plaintiff's suit under Federal Rule of Civil Procedure 12(b)(6) is reversed where plaintiff's stated claims under the Lanham Act, alleging false advertising and unfair competition, were sufficient for purposes of Rule 12(b)(6).

[08/12] THE SCOTT FETZER CO. v. HOUSE OF VACUUMS, INC.
In a trademark infringement case, summary judgment was granted to defendant as no reasonable jury could conclude that defendant misappropriated plaintiff's mark in any way, and the district court did not abuse its discretion in denying defendant's request for attorneys' fees.

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Copyright

[11/12] Halicki Films, LLC v. Sanderson Sales & Mktg.
In an action alleging, inter alia, copyright and trademark infringement involving the original and remade motion pictures "Gone in 60 Seconds", as well as products relating to the film, summary judgment for defendants is vacated where the district court erred in: 1) refusing to use extrinsic evidence submitted by plaintiffs to aid in its interpretation of an agreement between the parties, finding that such evidence did not show that the agreement was reasonably susceptible to plaintiffs' interpretation; 2) interpreting disputed language in an agreement between plaintiff and a non-party corporation; 3) applying the wrong legal standard in finding that plaintiffs did not have statutory standing to assert trademark infringement and unfair competition claims; and 4) concluding that plaintiffs did not have statutory or Article III standing to assert claims for declaratory relief.

[10/14] Chapman v. New York State Div. for Youth
Dismissal of plaintiffs' copyright and antitrust claims is affirmed in part, vacated in part, and remanded where: 1) the district court erred in dismissing plaintiffs' copyright claim on the basis that the contract at issue unambiguously granted the state defendants the right to copy plaintiffs' materials indefinitely; and 2) plaintiffs failed to allege a plausible antitrust market in which the defendants monopolized the trade for restraint services or engaged in restraint of trade or unfair competition with respect thereto.

[09/23] Barboza v. New Form, Inc.
In a case considering whether damages for willful copyright infringement are dischargeable debt in the infringer's bankruptcy, summary judgment that such damages are non-dischargeable is reversed and remanded where: 1) there was a genuine issue of material fact as to whether the willful copyright infringement was a willful injury under Bankruptcy Code section 523(a)(6); and 2) the maliciousness requirement of Bankruptcy Code section 523(a)(6) was not addressed separately from the willfulness requirement.

[09/12] Weitzman, LLC v. Microcomputer Resources, Inc.
In a copyright claim arising out of the provision of computer software systems, grant of summary judgment in favor of plaintiff-manufacturer is vacated and remanded where: 1) the district court lacked subject matter jurisdiction to hear plaintiff's suit; 2) the law remains clear that the Declaratory Judgment Act does not independently create subject matter jurisdiction; and 3) federal courts are without jurisdiction to hear infringement claims unless the disputed copyright has been registered.

[09/10] Penguin Group v. Steinbeck
In an action under the Copyright Act, summary judgment for defendants, on the grounds that a notice purporting to terminate a 1938 agreement granting licenses for publications of certain Steinbeck works was valid, is reversed where: 1) a subsequent agreement entered into in 1994 terminated and superseded the 1938 agreement; 2) the notice of termination was therefore invalid; and 3) the 1994 agreement remains in effect. (Republished opinion, Errata filed)

[09/09] Asset Marketing v. Gagnon
In a software copyright and trade secret case, summary judgment for defendant on the grounds of an implied license to retain, use and modify the software was affirmed where: 1) defendant requested creation of the software programs; 2) plaintiff created the programs for defendant and delivered them to defendant by installing them on defendants' computers and storing source code for the programs on defendant's premises; and 3) defendant manifested an intent that plaintiff would maintain and modify the programs.

[09/03] Omega v. Costco Wholesale Corp.
In a copyright infringement action under 17 U.S.C. sections 106(3) and 602(a), grant of summary judgment for defendant is reversed and remanded where non-counterfeit goods were first sold outside the U.S. and then imported for sale in the U.S. without the copyright holder's authorization, thus the first sale doctrine, section 109(a), does not apply.

[08/13] Jacobsen v. Katzer
In a suit alleging that defendants infringed upon plaintiff's copyright in open-source computer code by violating the copyright license's distribution and modification provisions, denial of a preliminary injunction is vacated and remanded where: 1) the limitations contained in the provisions were conditions for granting the license, and violation of the limitations would constitute copyright infringement, not mere breach of contract; and 2) remand was necessary to determine whether a presumption of irreparable harm applied.

[08/13] Penguin Group (USA) Inc. v. Steinbeck
In an action under the Copyright Act, summary judgment for defendants, on the grounds that a notice purporting to terminate a 1938 agreement granting licenses for publications of certain Steinbeck works was valid, is reversed where: 1) a subsequent agreement entered into in 1994 terminated and superseded the 1938 agreement; 2) the notice of termination was therefore invalid; and 3) the 1994 agreement remains in effect.

[08/13] Penguin Group (USA) Inc. v. Steinbeck
In an action under the Copyright Act, summary judgment for defendants, on the grounds that a notice purporting to terminate a 1938 agreement granting licenses for publications of certain Steinbeck works was valid, is reversed where: 1) a subsequent agreement entered into in 1994 terminated and superseded the 1938 agreement; 2) the notice of termination was therefore invalid; and 3) the 1994 agreement remains in effect.

[08/04] Cartoon Network, LP v. CSC Holdings, Inc.
Summary judgment for plaintiff television studios is reversed and district court's injunction against defendant Cablevision is vacated where the district court erred in holding that defendants' proposed "Remote Storage" Digital Video Recorder (RS-DVR) system violates the Copyright Act by infringing plaintiffs' exclusive rights of reproduction and public performance.

[07/31] US v. Teh
A conviction for "fraudulently or knowingly import[ing]... merchandise contrary to law" is affirmed over claims that: 1) the indictment did not give proper notice of the elements of the charged offense; 2) the section under which he was charged, 18 U.S.C. section 545, cannot be used to charge importation contrary to the copyright laws; and 3) the evidence before the district court was insufficient to prove a violation of section 545.

[07/25] Blueport Co. v. US
In an action against the government arising from an Air Force employee's refusal to provide the Air Force with the source code for a software program he had written on his own time and subsequently shared with other Air Force personnel, dismissals of copyright infringement and Digital Millennium Copyright Act (DMCA) claims for lack of jurisdiction are affirmed where: 1) the limited waivers of sovereign immunity contained in the copyright infringement statutes were properly construed as jurisdictional requirements; 2) the burden to prove jurisdiction was properly placed on plaintiff; 3) plaintiff's copyright infringement claim fell within provisos excepting it from the waiver of sovereign immunity; and 4) the DMCA contains no express or implied waiver of sovereign immunity.

[07/11] Classic Media, Inc. v. Mewborn
In actions seeking declaratory relief as to the parties' respective copyright interests in works involving the famous children's story and novel, Lassie Come Home, the circuit court rules that the Copyright Act of 1976's termination of transfer right, 17 U.S.C. section 304(c), was not extinguished by a post-1978 re-grant of the very rights previously assigned before 1978.

[05/27] Mostly Memories, Inc. v. For Your Ease Only, Inc.
In a suit alleging copyright infringement and various state-law claims, denial of attorney's fees for defendants and sua sponte dismissal of their counter claims is reversed and remanded where: 1) the district court did not explain why it dismissed the counterclaims and its apparent rationale, a defect in jurisdiction or venue, was unsupported by the record; and 2) defendant was the prevailing party and was entitled to an award of attorney's fees under section 505 of the Copyright Act.

[05/14] Oravec v. Sunny Isles Luxury Ventures, L.C.
In an action brought by plaintiff-architect under the Copyright Act alleging that defendants infringed his copyrighted architectural designs via the design, development, and construction of certain Trump buildings, summary judgment for defendants, as well as a denial of a motion for leave to file a third amended complaint, are affirmed where a thorough review of the record indicated that the district court properly made its rulings under the specific facts of the case and did not abuse its discretion in denying the motion for leave to amend.

[05/06] U.S. v. Armstead
Convictions for felony willful copyright infringement for private financial gain are affirmed over allegations that the government failed to produce sufficient evidence that DVDs sold had an aggregate value of more than $2,500 in "retail value" as used in section 2319(b)(1).

[04/28] Litecubes, LLC v. N. Light Prods., Inc.
In a patent and copyright infringement case, denial of a motion to dismiss by the defendant-appellant for lack of subject matter jurisdiction and the denial of a judgment as a matter of law (JMOL) is affirmed where: 1) the district court need not consider whether the alleged patent infringement occurred in the U.S. in order to determine subject matter jurisdiction; 2) the extraterritorial limits of the Copyright Act apply to the elements of the claim, and not to the question of subject matter jurisdiction; 3) the court predicts that Eighth Circuit law would find that the term "sale" should be interpreted consistently in copyright and patent law; and 4) there was sufficient evidence for the jury verdict and the denial of a JMOL.

[04/03] ConnectU, LLC v. Zuckerberg
In an appeal in a dispute about the parties' rights in and to Facebook, an order dismissing the action is reversed where the jurisdictional claim in the amended complaint, which switched the basis of the district court's subject matter jurisdiction from the existence of diversity of citizenship to federal question, warranted full consideration and established federal question jurisdiction.

[03/27] Employers Ins. Of Wausau v. Fox Entm't Group, Inc.
In an action by insurers seeking declaratory judgment that they had no coverage obligations relating to an underlying copyright infringment suit, the "special circumstances" exception to the first-filed rule does not apply to a declaratory judgment filed in the absence of a direct threat of litigation in a forum with at least some ties to the litigation.

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Intellectual Property

[12/01] Qualcomm Inc. v. Broadcom Corp.
In a patent-infringement case involving the enforceability of patents for video-compression technology, determination that plaintiff had failed to disclose the patents to a standards-setting organization (SSO) of which it was a member, and declaration that the patents were therefore unenforceable against the world, is affirmed in part, vacated in part, and remanded where: 1) plaintiff had a duty to disclose the patents prior to the adoption of new standards by the SSO, which it breached; and 2) plaintiff had therefore waived its right to enforce its patents; but 3) the enforceability waiver was limited in scope to a subset of compliant products.

[11/13] In Re Basell Poliolefine Italia S.P.A.
In an inventor's appeal of a reexamination, rejection of all claims of a process patent for the polymerization of certain unsaturated hydrocarbons is affirmed where substantial evidence supported the rejection of the claims based on obviousness-type double patenting.

[11/12] Halicki Films, LLC v. Sanderson Sales & Mktg.
In an action alleging, inter alia, copyright and trademark infringement involving the original and remade motion pictures "Gone in 60 Seconds", as well as products relating to the film, summary judgment for defendants is vacated where the district court erred in: 1) refusing to use extrinsic evidence submitted by plaintiffs to aid in its interpretation of an agreement between the parties, finding that such evidence did not show that the agreement was reasonably susceptible to plaintiffs' interpretation; 2) interpreting disputed language in an agreement between plaintiff and a non-party corporation; 3) applying the wrong legal standard in finding that plaintiffs did not have statutory standing to assert trademark infringement and unfair competition claims; and 4) concluding that plaintiffs did not have statutory or Article III standing to assert claims for declaratory relief.

[11/07] Teva Pharms., USA, Inc. v. Leavitt
In an action to force the Food and Drug Administration to grant a period of market exclusivity for plaintiff's generic version of the drug Risperdal, judgment for plaintiff is reversed and injunction vacated where the patent cited by plaintiff in its application had been delisted, and even though it was still listed in the FDA's reference guide, plaintiff was not entitled to cite it as the basis for its application.

[11/05] E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc.
In an action brought by the operator of a strip club in Los Angeles against the producer of a video game in the "Grand Theft Auto" series claiming, inter alia, that the game's depiction of a strip club called the "Pig Pen" infringed its trademark and trade dress associated with the "Play Pen", summary judgment for defendant-game producer is affirmed where: 1) modification of plaintiff's trademark was not explicitly misleading and was thus protected by the First Amendment; and 2) the First Amendment defense applies equally to plaintiff's state law claims as to its Lanham Act claim.

[11/03] In Re DBC
In an appeal from the reexamination of a patent describing a "nutraceutical" composition prepared from the mangosteen fruit, rejection of all pending claims for obviousness is affirmed where: 1) the board established a prima facie case of obviousness based on the prior art; 2) appellant presented insufficient evidence to rebut the prima facie case; and 3) appellant waived its argument regarding the constitutionality of the appointment of administrative patent judges by not raising it before the board.

[10/30] In Re Alonso
In an appeal of the rejection of one claim of applicant's proposed patent for a method of treating certain cancers with human monoclonal antibodies, the rejection is affirmed where substantial evidence supported a finding that the claim lacked an adequate written description of the relevant genus of antibodies.

[10/30] In Re Bilski
In an appeal of the rejection of a patent application for a claimed method of hedging risk in commodities trading, a Board of Patent Appeals and Interferences decision sustaining the rejection is affirmed by the court sitting en banc where: 1) a claimed process is patent-eligible if it is either tied to a particular machine or apparatus, or it transforms a particular article into a different state or thing; and 2) applicants' proposed process was neither tied to a particular machine nor transformative of any physical article, and was therefore not eligible for patent protection.

[10/21] Abbot Labs. v. Sandoz, Inc.
In a suit over infringement of patents for extended release formulations of the antibiotic clarithromycin, grant of plaintiff's motion for preliminary injunction is affirmed where: 1) plaintiff was likely to prevail at trial on the issues of whether the patents were invalid for anticipation or obviousness, or were unenforceable based on inequitable conduct; 2) the term "pharmaceutically acceptable polymers" was properly construed and indicated a likelihood that plaintiff would prevail on its infringement claim; and 3) the trial court properly weighed and explained the equitable factors relevant to the grant of a preliminary injunction.

[10/20] Net MoneyIN, Inc. v. VeriSign, Inc.
In a suit alleging infringement of patents describing systems for making automated payments over the Internet, judgments of invalidity for indefiniteness and anticipation, summary judgment that defendant did not induce infringement, and denial of plaintiff's motion to amend its complaint to allege inducement are affirmed in part, reversed in part, and remanded where: 1) proper claim constructions required a finding of invalidity of four claims for indefiniteness; 2) the district court acted within its discretion by denying plaintiff an opportunity to amend its complaint to include inducement claims which it had earlier disavowed; but 3) unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate.

[10/17] Minks v. Polaris Indus., Inc.
In a suit alleging infringement of a patent for an electronic governor system for internal combustion engines, a finding of willful infringement and award of damages and attorney's fees are affirmed in part, vacated in part, and remanded in part where: 1) the Seventh Amendment required that plaintiff be given the option of a new trial on compensatory damages after the court reduced the jury's damages award; 2) a jury instruction on actual notice of infringement did not fairly and concretely state the issues and the law; 3) substantial evidence supported the finding of infringement; 4) there was no abuse of discretion in the amount of attorney's fees awarded; and 5) any error in a jury instruction on willfulness did not affect defendant's substantial rights.

[10/15] In Re Ciprofloxacin Hydrochloride Antitrust Litigation
In a suit alleging that a settlement agreement between the patent holder for the antibiotic Cipro and a generic manufacturer violated federal and state antitrust laws, summary judgment for defendants is affirmed where: 1) there was no Sherman Act violation because any anti-competitive effects caused by the settlement agreements were within the exclusionary zone of the Cipro patent; and 2) state antitrust and consumer-protection claims were properly dismissed as preempted by federal law.

[10/14] Kyocera Wireless Corp. v. Int'l Trade Comm'n
An ITC ruling that appellant's chips and chipsets infringed certain patents and were therefore subject to a limited exclusion order (LEO) restricting their import is affirmed in part, vacated and remanded in part where: 1) a disputed claim was properly construed by the agency; 2) the patent claims at issue were not invalid for anticipation or obviousness; 3) remand was necessary for consideration of whether appellant had the specific intent to induce infringement; and 4) the LEO issued by the ITC was limited to excluding persons named by the complainant.

[10/10] Asyst Techs., Inc. v. Emtrak, Inc.
In an infringement suit over a patent describing a system for tracking articles such as semiconductor wafers in a manufacturing facility, judgment as a matter of law of invalidity due to obviousness is affirmed where: 1) a prior patent disclosed the same "sensing means" as plaintiff's patent; 2) the invention obtained in plaintiff's patent would hav been obvious to a person of ordinary skill in the art; and 3) a change in claim construction resulting from decisions on prior appeals was grounds for defendant to amend its defenses.

[10/10] Tech. Licensing Corp. v. Videotek, Inc.
In an infringement suit over two patents relating to the separation of synchronization signals from video signals, rulings on validity, infringement, and inequitable conduct are affirmed where: 1) on an invalidity claim, the burden of production was properly shifted to plaintiff to show evidence that the asserted claim was entitled to the benefit of a filing date prior to the alleged prior art, and an earlier patent did not provide adequate written description support showing that the inventor was in possession of the invention claimed in the later patent; 2) there was no clear error in a finding of infringement of one of the disputed claims; 3) another claim was not invalid for indefiniteness; and 4) the inventor did not commit inequitable conduct by failing to disclose certain prior art.

[10/10] Licciardello v. Lovelady
In an action for trademark infringement under the Lanham Act brought by a Christian musician and entertainer against his former manager, grant of motion to dismiss for lack of persona jurisdiction is reversed and remanded where: 1) the Constitution was not offended by the exercise of Florida's longarm statute to effect personal jurisdiction over defendant because his intentional conduct in his state of residence was calculated to cause injury to plaintiff in Florida; and 2) the Constitution was not offended by Florida's assertion of its jurisdiction over such nonresident tortfeasors.

[10/09] Pacific Sunwear of California, Inc. v. Oleas Enter., Inc.
In a breach of warranty lawsuit brought by plaintiff-clothing retailer, grant of summary judgment in favor of defendant is reversed where: 1) the trial court's interpretation of rightful claim was erroneous; 2) a rightful claim under section 2312(3) is a nonfrivolous claim of infringement that has any significant and adverse effect on the buyer's ability to make use of the purchased goods; and 3) under this standard, the trial court could not properly concluded, as a matter of law, that the third party infringement claim against plaintiff was not a rightful claim.

[10/09] Predicate Logic, Inc. v. Distributive Software, Inc.
In a suit alleging infringement of a patent relating to measurement and analysis technologies for use in software development, summary judgment of invalidity is reversed and remanded where amendments made during reexamination did not improperly broaden the scope of the claims.

[10/08] Motorola Inc. v. Amkor Tech., Inc.
In a suit over the terms of a patent license agreement (PLA) between plaintiff and a third party, affecting the transfer of an interest in the patents to defendant, judgment for defendant is affirmed where: 1) defendant was not judicially estopped from changing its argument during trial about the relationship between two sections of the PLA; 2) the "law of the case" did not prevent defendant from changing its arguments on an earlier remand; and 3) there was sufficient evidence to support the trial court's findings of fact.

[10/07] Cohesive Techs., Inc. v. Waters Corp.
In three related actions alleging infringement of two patents describing high-performance liquid chromatography columns, jury verdict of infringement in one action, summary judgment for plaintiff in a second action, and summary judgment of noninfringement in the third action are affirmed in part, reversed in part, vacated in part, and remanded where: 1) the district court properly construed the term "rigid" and properly denied defendant's motion for judgment of noninfringement as a matter of law; 2) there was no clear error in the conclusion that defendant failed to prove the deceptive intent necessary to sustain its claim of inequitable conduct; 3) there was error in the entry of judgment as a matter of law on anticipation without submitting the issue to the jury; 4) under the correct construction of "greater than about 30 micrometers," defendant was not entitled to summary judgment of no literal infringement; 5) defendant was entitled to summary judgment of no infringement under the doctrine of equivalents; 6) judgment that plaintiff was not entitled to lost profits required remand and reconsideration; 7) defendant's infringement was not willful; and 8) the matter would not be reassigned to a different district court judge on remand, despite lengthy delays in prior rulings.

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Trademark

[11/12] Halicki Films, LLC v. Sanderson Sales & Mktg.
In an action alleging, inter alia, copyright and trademark infringement involving the original and remade motion pictures "Gone in 60 Seconds", as well as products relating to the film, summary judgment for defendants is vacated where the district court erred in: 1) refusing to use extrinsic evidence submitted by plaintiffs to aid in its interpretation of an agreement between the parties, finding that such evidence did not show that the agreement was reasonably susceptible to plaintiffs' interpretation; 2) interpreting disputed language in an agreement between plaintiff and a non-party corporation; 3) applying the wrong legal standard in finding that plaintiffs did not have statutory standing to assert trademark infringement and unfair competition claims; and 4) concluding that plaintiffs did not have statutory or Article III standing to assert claims for declaratory relief.

[11/05] E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc.
In an action brought by the operator of a strip club in Los Angeles against the producer of a video game in the "Grand Theft Auto" series claiming, inter alia, that the game's depiction of a strip club called the "Pig Pen" infringed its trademark and trade dress associated with the "Play Pen", summary judgment for defendant-game producer is affirmed where: 1) modification of plaintiff's trademark was not explicitly misleading and was thus protected by the First Amendment; and 2) the First Amendment defense applies equally to plaintiff's state law claims as to its Lanham Act claim.

[10/10] Licciardello v. Lovelady
In an action for trademark infringement under the Lanham Act brought by a Christian musician and entertainer against his former manager, grant of motion to dismiss for lack of persona jurisdiction is reversed and remanded where: 1) the Constitution was not offended by the exercise of Florida's longarm statute to effect personal jurisdiction over defendant because his intentional conduct in his state of residence was calculated to cause injury to plaintiff in Florida; and 2) the Constitution was not offended by Florida's assertion of its jurisdiction over such nonresident tortfeasors.

[10/09] Pacific Sunwear of California, Inc. v. Oleas Enter., Inc.
In a breach of warranty lawsuit brought by plaintiff-clothing retailer, grant of summary judgment in favor of defendant is reversed where: 1) the trial court's interpretation of rightful claim was erroneous; 2) a rightful claim under section 2312(3) is a nonfrivolous claim of infringement that has any significant and adverse effect on the buyer's ability to make use of the purchased goods; and 3) under this standard, the trial court could not properly concluded, as a matter of law, that the third party infringement claim against plaintiff was not a rightful claim.

[09/25] US v. Able Time, Inc.
In an suit involving allegedly counterfeit watches seized by Customs and the resulting civil penalties imposed, grant of summary judgment for defendant is reversed and remanded where: 1) the Tariff Act does not contain an identity of goods or services requirement; and 2) as a matter of law, goods imported by defendant could not be "merchandise bearing a counterfeit mark" under 19 U.S.C. section 1526(e) because the owner of the trademark in question did not at the time make the type of goods imported by defendant.

[09/12] Major League Baseball Properties v. Salvino
In an antitrust action alleging that plaintiff Major League Baseball Properties violated section 1 of the Sherman Act, summary judgment in favor of plaintiff is affirmed over claims of error that: 1) defendant failed to adduce evidence to show that the challenged organization and activities had an actual adverse effect on competition or that plaintiff had sufficient market power to inhibit competition market-wide; and 2) defendant's state-law claims contained no argument as to why the district court's dismissal was incorrect.

[09/11] AutoZone, Inc. v. Strick
In a suit alleging both federal and state trademark infringement over marks used for automotive services businesses, summary judgment for defendant is reversed where plaintiff produced sufficient evidence that, under the applicable factors test, there were triable factual issues regarding the likelihood of confusion between plaintiff's and defendant's marks.

[09/09] Facenda v. N.F.L. Films, Inc.
In a suit by the estate of a broadcaster claiming that defendant's use of the broadcaster's voice in a program about the video game "Madden NFL 06" constituted false endorsement and unauthorized use of name or likeness, summary judgment for plaintiff is affirmed in part and vacated in part where: 1) the program was commercial speech made to promote the game, and no First Amendment defense applied; 2) evaluating false-endorsement claims under the Lanham Act required the use of a factors test to determine the likelihood of confusion; 3) a standard-release contract between plaintiff and defendant regarding the use of voice recordings was not a complete bar to plaintiff's claim; 4) there were triable issues of fact on the false-endorsement claim as to whether there was a likelihood of confusion; and 5) federal copyright law did not expressly or impliedly preempt plaintiff's state-law right-of-publicity claim.

[09/08] WMS Gaming Inc. v. WPC Gaming Prods. Ltd.
In a trademark-infringement suit, award of actual damages is reversed and remanded where: 1) plaintiff had clearly requested in its pleadings both actual damages and an equitable accounting of profits, and upon winning a default judgment was entitled to both; and 2) in the absence of evidence from defendant as to the equitable accounting, plaintiff was entitled to all the relief supported by its evidence.

[09/04] Empresa Cubana Del Tabaco v. Culbro Corp.
In a case arising from a dispute over the ownership of the COHIBA mark on cigars sold in the U.S., denial of motion directing U.S. Patent and Trademark Office (PTO) to dismiss pending petitions to cancel defendant's registration of the trademark, is affirmed where the district court did not abuse its discretion in denying the relief requested.

[08/28] The John Allan Co. v. The Craig Allen Co. LLC
In a trademark-infringement suit over defendant's use of the name "Craig Allen's" for a grooming salon, judgment that the name did not infringe on the mark "John Allan's" is reversed and remanded where: 1) evidence that consumers were confused by the two names should have been considered; 2) there were internal inconsistencies in findings regarding the likelihood of confusion of the two names; and 3) the "safe distance" rule did not require injunctive relief to assure that defendant choose a new mark that avoided all possibility of confusion.

[08/28] Venture Tape Corp. v. McGills Glass Warehouse
In a Lanham Act claim of liability for infringement of the registered trademarks "Venture Tape" and "Venture Foil", judgment in favor of plaintiff-manufacturer and award of equitable share of defendant-retailer's profits are affirmed where: 1) defendant admitted that his purpose in using the Venture marks was to lure customers to his website; and 2) the profits award was sufficiently substantial to serve the purposes of recovering a "rough measure" of the likely harm incurred, preventing infringer's unjust enrichment, and deterring further infringement, without being unduly large or burdensome.

[08/27] Gander Mountain Co. v. Cabela's, Inc.
In a case arising from a contract dispute involving a 1996 transaction between the parties, summary judgment for plaintiff on a counterclaim, finding that a provision at issue was unenforceable because it was merely an agreement to agree, is affirmed over claims that the district court violated the law-of-the-case doctrine and erred in granting summary judgment.

[08/20] Koninklijke Philips Elecs., N.V. v. KXD Tech., Inc.
In an action alleging that defendants had infringed plaintiff-Philips's registered trademark and had knowingly offered counterfeited Philips goods for sale in the United States, an appeal from an order imposing monetary sanctions on defendants for civil contempt is dismissed for lack of appellate jurisdiction.

[08/18] Am. Needle, Inc. v. Nat'l Football League
In an antitrust case alleging that the NFL's exclusive headwear licensing agreement with Reebok International violated sections 1 and 2 of the Sherman Act, summary judgment for defendants is affirmed where: 1) a motion under Fed. R. Civ. P. 56(f) to allow additional discovery was properly denied where plaintiff did not identify the evidence it sought to discover; 2) NFL teams are a "single entity" for purposes of licensing their intellectual property; and 3) as a single entity, the teams were free to license their intellectual property on an exclusive basis.

[08/05] E.T. Browne Drug Co. v. Cococare Prods., Inc.
In a trademark dispute between manufacturers of beauty and personal-care products over the allegedly trademarked phrase "Cocoa Butter Formula," summary judgment for defendant is affirmed where: 1) a genuine issue of material fact existed as to whether the phrase was generic or descriptive; but 2) plaintiff did not produce evidence to show that the phrase had acquired secondary meaning sufficient to create a protectable trademark interest.

[07/30] Singh v. Morris
In a state action arising out of alleged legal malpractice in a federal trademark suit, summary judgment for defendant-attorney is reversed and the case is dismissed for lack of federal jurisdiction where, despite the requirement for plaintiff to prove he would have prevailed on the underlying federal trademark case, the malpractice claim did not "arise under" federal law since the federal issue was not substantial, and federal jurisdiction would have considerably intruded on state authority.

[07/28] Budget Blinds, Inc. v. White
In a suit arising from alleged violations of a settlement agreement covering a trademark dispute between competing sellers of window blinds, vacatur of a default judgment entered against defendant in the Central District of California is vacated and remanded where: 1) Fed. R. Civ. P. 60(b)(6) allows a district court to vacate the judgment of another district court in "extraordinary circumstances," but no such circumstances existed in this case; and 2) additional fact-finding was necessary to determine whether the judgment should be vacated for lack of personal jurisdiction under Rule 60(b)(4).

[07/17] Guaranty Bank v. Chubb Corp.
In a suit involving an insurer's obligation to defend its insured under an "advertising injury" policy when the insured was sued over the similarity of its name to a competitor's, summary judgment to the defendant-insurer is affirmed where: 1) plaintiff-insured had failed to give defendant timely notice of the suit and 2) plaintiff had been sued for common-law trademark infringement and unfair competition, but plaintiff's policy covered only suits involving registered trademarks.

[05/29] UT Lighthouse Ministry v. Found. for Apologetic Info. and Research
In an action claiming trademark infringement, unfair competition, and cybersquatting, summary judgment for defendant is affirmed where: 1) trademark infringement and unfair competition claims failed as plaintiff did not show that "Utah Lighthouse" was protectable, that defendant's use was in connection with any goods or services, and that defendant was likely to cause confusion among consumers as to the source of goods sold on its online bookstore; 2) defendant lacked a bad faith intent to profit from the use of plaintiff's trademark in several domain names under the Anti-Cybersquatting Protection Act (ACPA); and 3) defendant's website met safe harbor conditions of the ACPA since it was a parody.

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