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June 2009
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Univ. of Pittsburgh of the Commonwealth System of Higher Education v. Hedrick

Marc H. Hedrick, Prosper Benhaim, Hermann Peter Lorenz, and Min Zhu appeal the judgment of the United States District Court for the Central District of California finding that they were not co-inventors of U.S. Patent No. 6,777,231, and granting a misjoinder motion pursuant to 35 U.S.C. § 256. Univ. of Pittsburgh v. Hedrick, No. 2:04-cv-09014 (C.D. Cal. June 9, 2008). Because we agree that University of Pittsburgh researchers Adam Katz and Ramon Llull completed conception of the claimed invention before the appealing researchers contributed their efforts, we affirm.

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In re Hotels.com

Hotels.com, L.P. (“the applicant”) applied to register the service mark HOTELS.COM in Class 43, for the services of “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network.” The Trademark Trial and Appeal Board (“TTAB” or “Board”) refused the registration on the ground that the mark is a generic term for these services. In re Hotels.com, L.P., 87 USPQ2d 1100 (T.T.A.B. Mar. 24, 2008). We affirm the Board’s decision.

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Gemtron Corp. v. Saint-Gobain Corp.

Refrigerator parts manufacturer Saint-Gobain Corporation (“Saint-Gobain”) appeals from the grant of a permanent injunction following a determination that certain of its refrigerator shelves infringe claim 23 of U.S. Patent No. 6,679,573 (the “’573 patent”), owned by Gemtron Corporation (“Gemtron”). Gemtron Corp. v. Saint-Gobain Corp., No. 1:04-387 (W.D. Mich. Sept. 22, 2008); see also Gemtron Corp. v. Saint-Gobain Corp., No. 1:04-0387 (W.D. Mich. Apr. 21, 2008); (“New Trial Op.”); Gemtron Corp. v. Saint-Gobain Corp., No. 1:04-0387 (W.D. Mich. Apr. 21, 2008) (“JMOL Op.”) Saint-Gobain Corp. v. Gemtron Corp., No. 1:04-387 (W.D. Mich. Apr. 17, 2006) (“S.J. Op.”). Because the district court correctly construed the claim term “relatively resilient end edge portion” to require only that the frame of the shelf be flexible at the time of manufacture, because there was undisputed evidence that the frames of Saint-Gobain’s accused shelves were flexible at the time of manufacture, and because the district court did not err in denying Saint-Gobain’s motions concerning obviousness, we affirm.

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Southern Grouts & Mortars v. 3M Company

Southern Grouts & Mortars, Inc. sells swimming pool finishes under the trademark DIAMOND BRITE and would like to register and use the domain name, diamondbrite.com, to advertise and sell its products. The problem for Southern Grouts is that its competitor in the swimming pool finishing industry, 3M Company, owns the registration. When 3M obtained the registration for diamondbrite.com, it also had trademark rights in the DIAMOND BRITE mark but not for use with pool finishing products. Instead, the mark was registered for use in connection with “electronically controlled display panels and signs.” Those trademark rights have lapsed, but 3M has continued to re-register the domain name. 3M displays no content on the website and has no intention of doing so. Southern Grouts sued 3M in district court, alleging that 3M’s continued registration of the domain name violated the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), and constituted unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). The district court granted summary judgment in favor of 3M. Southern Grouts appeals that judgment as well as the district court’s denial of its motion to amend its second amended complaint.

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Xtreme Lashes, LLC v. Xtended Beauty, Inc.

This dispute concerns trademarks for eyelash extensions. We hold that the district court incorrectly granted summary judgment to Defendant-Appellee Xtended Beauty, Inc. (“Xtended”) on infringement claims by Plaintiffs- Appellants Xtreme Lashes, LLC and Joumana Mousselli (collectively “Xtreme”). We also hold that the district court incorrectly stripped Xtreme’s mark EXTEND YOUR BEAUTY of trademark protection. We reverse and remand for trial.

 

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Zino Davidoff SA v. CVS Corp.

Defendant appeals from a preliminary injunction ordered by the United States District Court for the Southern District of New York (Karas, J.), which enjoined defendant, inter alia, from selling plaintiff’s trademarked products with the unique production code removed. The Court of Appeals (Leval, J.) affirms. Because the production codes play an important role in helping the trademark owner to guard against counterfeits and protect the reputation of the mark, the district court properly found that its unauthorized removal by a seller could justify a finding of trademark infringement.

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Intercollegiate Broad. Sys. v. Copyright Royalty Bd.

Appellants seek review of a final determination of the Copyright Royalty Judges, setting rates and terms relating to webcasting. See Digital Performance Right in Sound Recordings and Ephemeral Recordings (“Order”), 72 Fed. Reg. 24,084 (May 1, 2007). Webcasting is the process of transmitting sound recordings over the Internet. This case consolidates five separate appeals. A group of “commercial webcaster” appellants led by the Digital Media Association (“DiMA”) argues that the rates for commercial webcasters set by the Judges were unreasonable and that the absence of a cap on minimum fees paid per licensee was arbitrary and capricious. Several “small commercial webcaster” appellants argue that the Judges’ refusal to permit them to pay royalties as a percentage of revenues was arbitrary and capricious. “Noncommercial broadcaster” appellants—including the Collegiate Broadcasters, Inc., Intercollegiate Broadcasting System, Inc., and the National Religious Broadcasters Noncommercial Music License Committee—argue that the Judges set unreasonable rates for noncommercial webcasters, that they established a $500 minimum fee per station without substantial evidence, and that they improperly deferred consideration of record-keeping requirements to a later proceeding. Appellant Royalty Logic, Inc., a contender to serve as the clearinghouse (or “collective”) for royalty payments, argues that the Judges exceeded their statutory authority by naming SoundExchange, Inc. the sole royalty collective. Respondent Copyright Royalty Board defends the Judges’ determination. (The Board is “the institutional entity in the Library of Congress that . . . house[s]” the Judges. 37 C.F.R. § 301.1.) SoundExchange intervened to defend the Judges’ determination.

Months after the briefing schedule had been set, Royalty Logic moved to file supplementary briefs on the issue of whether the appointment of the Copyright Royalty Judges violated the Appointments Clause of the Constitution of the United States. A motions panel of this court granted the motion “without prejudice to the merits panel deciding whether or not to consider” the issue, and set a supplemental briefing schedule, soliciting briefs from Royalty Logic, the Board, and SoundExchange. Royalty Logic argued that the Judges’ appointment violated the Constitution. SoundExchange and the Board argued it did not, and argued further that Royalty Logic had forfeited consideration of the issue by not raising it in initial briefing before this court. We hold that Royalty Logic has forfeited the Appointments Clause issue. We vacate the $500 minimum fee for both noncommercials and commercials, and remand those portions of the determination for reconsideration by the Copyright Royalty Judges. In all other respects, we affirm the determination.

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SoundExchange, Inc. v. Librarian of Congress

In 2008 the Copyright Royalty Judges (CRJ) set the royalty rate that satellite radio services must pay to copyright owners for the use of sound recordings during the years 2007-2012. SoundExchange, an organization established to collect and distribute royalties to the copyright owners, appeals the CRJ’s determination, arguing it is arbitrary, capricious, and not supported by substantial evidence. We affirm the CRJ’s determination with respect to the royalty rate for the use of sound recordings but reverse with respect to the CRJ’s failure to set a royalty rate for “ephemeral copies” of sound recordings.

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St. Luke's Cataract & Laser Inst., P.A. v. Sanderson

On appeal, St. Luke’s argues that the district court erred by: (1) denying its motion for a new trial on its copyright infringement claim; (2) limiting the scope of its copyright to the 2003 version of the LaserSpecialist.com website; (3) finding that the damages awarded on its cyberpiracy and service mark infringement claims were duplicative; and (4) failing to exclude the testimony of Dr. Sanderson’s expert witness Patricia Perzel. Dr. Sanderson cross-appeals and challenges: (1) the district court’s denial of his motion for judgment as a matter of law on St. Luke’s service mark infringement and unfair competition claims; (2) the sufficiency of the evidence to support the award of profits, punitive damages, and attorney’s fees to St. Luke’s; and (3) the number of attorney hours in the district court’s attorney’s fees award. After review and oral argument, we vacate and remand as to the district court’s determination of duplicative damages, but affirm as to all other issues raised in St. Luke’s appeal and Dr. Sanderson’s cross-appeal.

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Marshak v. Treadwell

The case now before us focuses on the breadth of the injunction and efficacy of the remedies that were issued along with Judge Politan’s ruling. Judge Po litan enjoined Marshak and his company from marketing The Drifters anywhere – not On Broadway, not Up On the Roof, and not Under the Boardwalk – and ordered a full accounting of profits. In the years that followed, however, various family members and associates of Marshak picked up where Marshak left off, and began again promoting The Drifte rs, just as Marshak had. Treadwell, thinking that these actions were not Some Kind of Wonderful, thus brought the instant motion for contempt, arguing that the Politan injunc tion applied to Marshak’s associates as well as to Marshak. After a lengthy hearing, the District Court found that Marshak and his associates were in contempt of the Politan injunction, but limited Treadwell’s remedies to an award of attorneys’ fees. Bo th s ides then appealed: Marshak and his associates appealed the merits of the dec ision, while Treadwell challenged the paucity of the remedies.

For the reasons that follow, we affirm in part and reverse and remand in part.

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