Case Comments
| Publication year | 2017 |
| Author | Lowell Anderson |
Lowell Anderson
Stetina Brunda Garred & Brucker
A breach of implied contract claim was based on defendants' failure to pay for the use of an idea for a screen play, not the creation, production, distribution or content of films based on the play. The failure to pay was not an act in furtherance of free speech so the anti-SLAPP act did not apply. The denial of a motion to strike the claim was affirmed. In footnote 4, the court noted that anti-SLAPP motions may strike distinct claims within a cause of action even if the entire cause of action is not subject to anti-SLAPP and that may affect the award of attorney fees in the anti-SLAPP motion. Jordan-Benel v. Univ. City Studios, Inc., 123 U.S.P.Q.2d 1031 (9th Cir. 2017).
Travel costs, legal research costs and expert witness fees outside the purview of 28 U.S.C. §§ 1821 and 1920 were not recoverable. Costs for pretrial hearing transcripts were reasonably necessary to prepare for trial as many orders were issued from the bench rather than in writing, and thus the costs were recoverable. As the parties split the cost of daily trial transcripts, half of that cost was recoverable. The cost for certified copies of copyright registrations ($37,040), for converting files to electronic format and making copies of electronic records were recoverable and so intertwined with the human time to make those copies that there was no deduction for the human time to make the copies. The cost of exhibits for trial and witness preparation were recoverable. Costs of $146,790 were awarded. BMG Rights Mgmt. (US) LLC v. Cox Comm'ns, Inc., 122 U.S.P.Q.2d 1095 (E.D. Va. 2017).
Copyright owners were victims under the Mandatory Victims Restitution Act, 18 U.S.C. § 3663A and entitled to restitution to the extent they suffered actual loss from those convicted of trafficking in counterfeit goods under 18 U.S.C. § 2320. The wholesale price of DVDs was a reasonable estimate of the actual loss. U.S. v. Sterling, 122 U.S.P.Q.2d 1424 (11th Cir. 2017) (unpublished).
Duplicative time entries and effort by 13 attorneys with hourly billing rates from $424 to $822 per hour, warranted a 10% reduction. A reduced success, because of failed claims for vicarious liability and a permanent injunction, warranted another 10% reduction. Fees of $8,383,468 were awarded in a case recovering $25 million in damages. BMG Rights Mgmt. (US) LLC v. Cox Comm'ns, Inc., 122 U.S.P.Q.2d 1095 (E.D. Va. 2017).
A NCAA website selling licensed, autographed photos of former college championship basketball players was sued by the former players. "The right of publicity seeks to prevent commercial exploitation of an individual's identity without that person's consent....Mindful of that premise, we conclude that a publicity-right claim is not preempted when it targets non-consensual use of one's name or likeness on merchandise or in advertising. But when a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use, a publicity-right claim interferes with the exclusive rights of the copyright holder, and is preempted by section 301 of the Copyright Act." "In sum, our cases clarify that a publicity-right claim may proceed when a likeness is used non-consensually on merchandise or in advertising. But where a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use, a publicity-right claim is little more than a thinly disguised copyright claim because it seeks to hold a copyright holder liable for exercising his exclusive rights under the Copyright Act." The dismissal of claims as preempted was affirmed. Maloney v. T3Media, Inc., 853 F.3d 1004, 122 U.S.P.Q.2d 1165 (9th Cir. 2017).
A complaint was dismissed for failure to plead compliance with the registration requirement of 17 U.S.C. § 411(a). "Because registration occurs when the Register of Copyrights 'register[s] the claim,' id. § 410(a), we affirm." "Filing an application does not amount to registration." "The "Ninth and Fifth Circuits follow the 'application' approach which requires a copyright owner to plead that he has filed 'the deposit, application, and fee required for registration." Fourth Estate Pub. Benefit Corp. v. Wall-Street.com LLC, 856 F.3d 1338, 122 U.S.P.Q.2d 1586 (11th Cir. 2017).
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A website paid moderators to review submissions and post the selected submissions. Fact issues existed on: (1) whether the moderators were agents of the website or whether the submissions were posted at the direction of the users; (2) whether the website had actual knowledge of infringements through red flag knowledge, and (3) possibly whether the website financially benefited from the infringements that it had a right and ability to control. A summary judgment of non-infringement via the safe harbor provisions of the DMCA, was reversed. Mavrix Photographs, LLC v. LiveJournal, Inc., 853 F.3d 1020, 122 U.S.P.Q.2d 1396 (9th Cir. 2017).
Wallpaper samples were placed in Look Books available in stores for customers to view and order fabrics so the works were published. The registration of the wallpaper as an unpublished work was invalid because the work was published before registration. As plaintiff owned no valid copyright, the copyright claim was dismissed on summary judgment. Urban Textile, Inc. v. Rue 21, Inc., 122 U.S.P.Q.2d 1264 (C.D. Cal. 2017).
Plaintiff failed to establish "that it suffered an injury flowing directly from the challenged statements" so a summary judgment was affirmed. The injury can be by lessening of sales or injury to goodwill. A temporal link between a decline in sales and allegedly false statements on the defendant's success in registering .com domain names, was insufficient, especially when the representations were made to a small group. Saying it is "impossible to find the domain name that you want" was not susceptible of proof and the reference to "you" made it an opinion. Saying that "99% of all registrar searches today result in a 'domain taken' page" was true, and the survey presented did not address the consumer's understanding of this statement as needed to show consumers were misled. Summary judgment to defendants was affirmed. Verisign, Inc. v. XYZ.COM, LLC, 848 F.3d 292, 121 U.S.P.Q.2d 1586 (4th Cir. 2017).
The Hague Service Convention specifies certain approved methods of service and "preempts inconsistent methods of service" wherever the Convention applies. "Today we address a question that has divided the lower courts: whether the Convention prohibits service by mail. We hold that it does not." A default judgment for failure to serve process was vacated, and the order vacating the judgment was reversed and remanded. Water Splash, Inc. v. Menon, 137 S.Ct. 1504, 197 L.Ed.2d 826 (2017).
The act of filing a biosimilar application is an artificial act of infringement and thus no remedy or injunction exists under 35 U.S.C. § 271(e)(4) for failure to provide a copy of the biologics license application and related manufacturing information. Instead, "[t]he remedy provided by [42 U.S.C.] § 262(l)(9)(C) excludes all other federal remedies, including injunctive relief," for an applicant's failure to disclose its application and manufacturing information. An applicant can provide its 180-day pre-marketing before or after receiving FDA approval. Sandoz v. Amgen, 137 S.Ct. 1664, 198 L.Ed.2d 114, 122 U.S.P.Q.2d 1685 (2017).
The Board erred in finding anticipation where "a skilled artisan reading the reference would 'at once envisage' the claimed arrangement." A prior case with five binding agents and three coating techniques resulting in 15 possible combinations provided substantial evidence for a jury verdict of anticipation, but "does not permit the Board to fill in missing limitations simply because a skilled artisan would immediately envision them." Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 122 U.S.P.Q.2d 1116 (Fed. Cir. 2017).
A licensor received 5% of roofing sales obtained using a demonstration kit for roofing services, with the license requiring arbitration for all disputes "arising under" the agreement. The district court found the agreement was terminated before the dispute arose and that the claims did not arise under the agreement. The appellate court found the claims for design patent and trade dress infringement related to a party's making and selling competing roofing products rather than to the performance or interpretation of the license. The denial of a motion to dismiss or stay pending arbitration was affirmed. Evans v. Bldg. Mat'ls Corp. of Am, 858 F.3d 1377, 122 U.S.P.Q.2d 1781 (Fed. Cir. 2017).
A Rule 36 summary affirmance is a final judgment of the Federal Circuit and is a binding judgment for collateral estoppel (claim preclusion) purposes. The district court in that prior decision construed claim terms necessary to resolve the infringement and where its decision was based on a single issue so the basis of the decision was known. Alternative bases for the prior decision would have avoided preclusion. A finding of non-infringement based on collateral estoppel was affirmed. Phil-Insul Corp. v. Airlite Plastics Co., 854 F.3d 1344, 122 U.S.P.Q.2d 1441 (Fed. Cir. 2017).
"A patentee's use of 'i.e.,' in the intrinsic record, however, is often definitional." An "i.e." statement in the prosecution history, after a notice of allowance to more precisely claim the subject matter, resulted in construing "different types" to mean "different families of modulation techniques." Whether the prior art disclosed different families was a question of fact which was...
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