Intellectual Property and Tech Law Reports

Gen. Motors Corp. v. Lanard Toys, Inc.

The district court, in a trademark and trade dress infringement suit filed against Lanard Toys by General Motors Corporation, granted summary judgment for General Motors on its claims while denying Lanard’s motion for summary judgment based on the affirmative defenses of laches and estoppel. Lanard now appeals those decisions. The dispute is over a series of toy vehicles produced by Lanard called “THE CORPS! ATK” which resemble the Hummer vehicle produced by General Motors. Based on the following discussion, we affirm the district court’s decisions.

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Go Med. Indus. Pty, Ltd. v. Inmed Corp.

Go Medical Industries, Pty., Ltd. and Dr. Alexander G.B. O'Neil (collectively "Go") appeal from a final judgment of the United States District Court for the Northern District of Georgia. Go challenges orders (1) granting its motion for summary judgment of patent infringement but finding, inter alia, that the asserted claims were invalid as anticipated because Go was not entitled to claim the priority date of an earlier application, Go Medical Indus. Pty., Ltd. v. Inmed Corp., No. 01-CV-313 (N.D. Ga. July 9, 2003) ("SJ Order"); (2) denying its motion for prejudgment interest, Go Medical Indus. Pty., Ltd. v. Inmed Corp., No. 01-CV-313 (N.D. Ga. Sept. 30, 2004) ("Prejudgment Interest Order"); and (3) reducing the jury's award of damages on Go's claims for trademark infringement and breach of contract upon granting judgment as a matter of law ("JMOL"), Go Medical Indus. Pty., Ltd. v. Inmed Corp., No. 01-CV-313 (N.D. Ga. Jan. 25, 2005) ("First JMOL Order"). Specifically, Go argues that (1) the district court erred in granting summary judgment on the patent claim because there were factual disputes as to whether the earlier patent application met the requirements of 35 U.S.C. § 112; (2) prejudgment interest should have been awarded because the contract damages were liquidated; and (3) the damages award should not have been reduced.

Inmed Corporation, doing business as Rüsch, International ("Rüsch"), and Alpine Medical, Inc., formerly known as Medical Marketing Group, Inc. ("MMG"), separately cross-appeal. Rüsch contends that the district court erred in entering a permanent injunction, Go Medical Indus. Pty., Ltd. v. Inmed Corp., No. 01-CV-313 (N.D. Ga. Sept. 30, 2004) ("Injunction Order"), because Go had no trademark rights in the surname "O'Neil." MMG, on the other hand, asserts that (1) public policy bars Go's claims; (2) the district court erred in denying its second motion for JMOL requesting elimination of all the contract damages, Go Medical Indus. Pty., Ltd. v. Inmed Corp., No. 01-CV-313 (N.D. Ga. Aug. 5, 2005) ("Second JMOL Order"); and (3) there can be no implied trademark license of a surname that has not achieved secondary meaning.

As described in further detail below, we conclude that the district court misapplied the doctrine first set forth by Lear, Inc. v. Adkins, 395 U.S. 653 (1969), in reducing the damages for MMG's breach of contract. On all other issues, however, we find no reversible error. We thus affirm-in-part, vacate-in-part, and remand for a recalculation of damages.

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In the Matter of Mechanical and Digital Phonorecord Delivery Rate Adjustment Proceeding

Decison of the U.S. Copyright Office

In sum, and as stated more fully below, we believe that ringtones (including monophonic
and polyphonic ringtones, as well as mastertones) qualify as digital phonorecord deliveries
(“DPDs”) as defined in 17 U.S.C. § 115. Apart from meeting the formal requirements of
Section 115 (e.g., service of a notice of intention to obtain a compulsory license under Section
115(b)(1), submission of statements of account and royalty payments, etc.), whether a particular
ringtone falls within the scope of the statutory license will depend primarily upon whether what
is performed is simply the original musical work (or a portion thereof), or a derivative work (i.e.,
a musical work based on the original musical work but which is recast, transformed, or adapted
in such a way that it becomes an original work of authorship and would be entitled to copyright
protection as a derivative work).

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Mid-State Aftermarket Body Parts, Inc. v. MQVP, Inc.

This is a trademark infringement dispute between the owner of a registered service mark, MQVP, Inc., and an alleged infringer, Mid-State Aftermarket Body Parts, Inc. MQVP appeals the district court’s grant of summary judgment dismissing Lanham Act claims of infringement and false advertising. Concluding there are genuine issues of material fact as to whether Mid-State’s unauthorized use of MQVP’s service mark was “likely to cause confusion” as to the origin of products or services, 15 U.S.C. § 1125(a)(1)(A), or was false commercial advertising within the meaning of 15 U.S.C. § 1125(a)(1)(B), we reverse.

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Medrad, Inc. v. Tyco Healthcare Group LP

Medrad, Inc. appeals from a final judgment granting the motion of Tyco Healthcare Group LP, Mallinckrodt Inc., Liebel-Flarsheim Co., and Nemoto Kyorindo Co., Ltd. (collectively “Tyco”) for summary judgment of invalidity of U.S. Reissue Patent No. 37,602 (’602 reissue patent). Medrad, Inc. v. Tyco Healthcare Group, LP, 391 F. Supp. 2d 374 (W.D. Pa. 2005) (Case No. 01-CV-1997). Because we conclude that the defect that formed the basis for the ’602 reissue patent was within the plain meaning of 35 U.S.C. § 251, we reverse and remand.

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Red Carpet Studios Div. of Source Advantage, Ltd. v. Sater

This appeal arises out of litigation between Sater and Red Carpet for copyright violations. Sater sued Red Carpet for copying his designs for wind sculptures, and the parties entered into a settlement agreement. Sater then learned that Red Carpet potentially breached the settlement agreement and was again marketing wind sculptures which were substantially similar to those that were the subject of the first litigation.

Appellant Joel Joseph, counsel for Defendant Neil Sater, appeals the imposition of sanctions under 28 U.S.C. § 1927. Plaintiff Red Carpet Studios (“Red Carpet”) appeals the district court’s reduced sanctions award. Because neither party establishes that the district court abused its discretion, we AFFIRM.

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Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass'n

The Tillamook County Creamery Association, the maker of the Tillamook brand of cheese for nearly a hundred years, has a beef with a company called Tillamook Country Smoker, a purveyor of smoked meats and jerky. In 1976, Tillamook Country Smoker began selling its meat products under its name. The cheese people had actual knowledge of Tillamook Country Smoker’s activities, but never said a word. Not onlythat, the cheese folks even sold Tillamook Country Smoker’s products in its own gift shop and in its mail-order catalog.

Twenty-five years later, when Tillamook Country Smoker began selling its meat snacks in supermarkets, the cheese people for the first time claimed trademark infringement and sought to enjoin the meat people from making any further use of the Tillamook Country Smoker name. The cheese people explain their quarter-century delay in taking action against Tillamook Country Smoker by contending that they are victims of “progressive encroachment.” The district court ruled that the cheese people are barred by laches. We agree.

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Figueroa v. US

This is a suit for a refund of patent fees alleged to have been unlawfully exacted. The appellant, Miguel Figueroa (“Figueroa”), contends that the statutory patent fees imposed on him in 2001 and 2002 for filing his patent application and issuing his patent violated art. I, § 8, cl. 8 of the United States Constitution (the “Patent Clause”), because the statute was designed to generate revenue to fund federal programs other than the United States Patent and Trademark Office (“PTO”). Figueroa also contends that the fees constituted an impermissible direct tax in violation of art. I, §§ 2 & 9, cl. 4 (the “Direct Tax Clauses”). The Court of Federal Claims granted summary judgment for the United States on the first claim and dismissed the second. We affirm.

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New Amendments to the Federal Trademark Dilution Law

In response to the 2003 U.S. Supreme Court decision of Moseley v. Victoria's Secret, amendments to the Federal Trademark Act have been signed into law.  The amendments are designed to offer additional protection for "famous marks" against dilution.  The amendments eliminate the need to demonstrate actual economic harm from the dilution when a famous mark is diluted by "blurring" or "tarnishment."  Defenses based on fair use, newsreporting, and noncomercial use are provided.  Owners of famous marks are also granted the ability to oppose and cancel the registration of trademarks that are likely to cause dilution. 

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Moseley v. Victoria's Secret Opinion

Moseley v. Victoria's Secret Concurring Opinion

Dystar Textilfarben GMBH & Co. Deutschland KG v. C.H. Patrick, Co.

DyStar Textilfarben GmbH & Co. Deutschland KG ("DyStar") sued defendants C.H. Patrick Co. and Bann Quimica Ltda. (collectively, "Bann") in the United States District Court for the District of South Carolina, alleging direct, contributory, and induced infringement of U.S. Patent No. 5,586,992 ("the '992 patent"), which discloses a process for dyeing textile materials with catalytically hydrogenated leuco indigo. DyStar and Bann Quimica Ltda. are large chemical manufacturers that, inter alia, sell prereduced indigo for use in dyeing processes; C.H. Patrick Co. purchased prereduced indigo solution from Bann Quimica Ltda. in 2002 and used it to dye yarn in a process alleged to infringe.

The parties agreed to a jury trial before a magistrate judge. Prior to charging the jury and in open court, the magistrate judge granted DyStar's motion for judgment as a matter of law ("JMOL") that it had not engaged in inequitable conduct before the United States Patent and Trademark Office ("PTO"). The jury rendered a verdict that "Bann Quimica and/or C.H. Patrick" had infringed each of claims 1-4, assessed damages at $90,000, and declined to hold the '992 patent claims invalid for lack of enablement, anticipation or obviousness. DyStar Textilfarben GmbH & Co Deutschland KG v. C.H. Patrick Co., Civ. No. 6:02-2946-WMC (D.S.C. Sept. 16, 2005).

Following briefing, the magistrate judge denied Bann's motions for JMOL or, alternatively, a new trial on the question of invalidity of the '992 patent for anticipation, obviousness, and lack of enablement. DyStar Textilfarben GmbH & Co Deutschland KG v. C.H. Patrick Co., Civ. No. 6:02-2946-WMC (D.S.C. Nov. 1, 2005). The magistrate judge did not issue an opinion. His order stated:

The jury diligently considered the evidence presented and found for the plaintiff. This court concludes that the jury's verdict was reasonable and was supported by evidence in the record. Therefore, as this court has great respect for trial by jury and the right of the parties to request a jury trial, this court will not substitute its findings for those of the jury as the jury's decision was clearly supported by the trial record and was reasonable.

Bann appeals from the denials of its motions on anticipation and obviousness, and the grant of JMOL to DyStar regarding inequitable conduct.

For the reasons explained below, we reverse the district court's denial of Bann's motion for JMOL of invalidity of claims 1-4 for obviousness.

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