Decisions in Brief

• Author: John C. Gatz
• Pages: 58-62

Published in Landslide® magazine, Volume 13, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

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COPYRIGHTS By John C. Gatz

PATENTS

Decisions in Brief

Failing to Meet the Single Unit of Publication

Requirement May Be Grounds for Invalidity

Unicolors, Inc. v. H&M Hennes & Mauritz, LP, 959 F.3d 1194,

2020 U.S.P.Q.2d 10599 (9th Cir. 2020). Unicolors sued retailer

H&M alleging that a design Unicolors created was substan-

tially similar to a design printed on apparel sold by H&M. The

district court found in favor of Unicolors. H&M appealed on

the threshold issue of whether Unicolors had a valid copyright

registration for the design in question, which is necessary to

bring a copyright infringement suit under the Copyright Act.

Unicolors applied for registration of the design as part of a sin-

gle-unit registration that included 31 separate designs. H&M

argued that the resulting registration was invalid because the

application included known inaccuracies. In particular, H&M

alleged that Unicolors used a single copyright application to

register 31 separate works; however, to register a collection of

works as a single unit, the works must have been rst sold or

offered for sale together in an integrated manner.

The Ninth Circuit Court of Appeals agreed with H&M and

held that a collection of works does not qualify as a single unit

of publication unless all individual works of the collection were

rst published as a singular, bundled unit. The district court

determined that the works included in the registration were

not initially sold as a single unit and that Unicolors knowingly

included inaccurate information in the copyright application.

Further, the Ninth Circuit advised that the district court should

have requested the Register of Copyrights to recommend to the

court whether the inaccurate information, if known, would have

caused the Register to refuse the registration.

Thus, the Ninth Circuit reversed the district court’s deci-

sion and remanded with instructions to submit an inquiry to

the Register of Copyrights asking whether the known inaccu-

racies in the registration, if known to the Register, would have

caused it to refuse registration.

Reasonable Minds Could Differ on Substantial

Similarity at the Motion to Dismiss Stage

Zindel v. Fox Searchlight Pictures, Inc., No. 18-56087, 2020 WL

3412252, 2020 U.S.P.Q.2d 10688 (9th Cir. June 22, 2020). Zindel

sued for copyright infringement of his father’s play, Let Me Hear

You Whisper, against the defendants for the lm and book, The

Shape of Water. The district court dismissed the complaint on the

ground that the lm and book were not substantially similar to the

play as a matter of law. The Ninth Circuit found that the district

court erred and reversed, concluding that reasonable minds could

differ as to whether there could be substantial similarity between

the works. The Ninth Circuit determined that while the works

were properly presented to the district court, additional evidence,

such as expert testimony, would aid in deciding whether there are

similarities in the protectable elements of the works.

Attorney Fees

Electronic Communication Technologies, LLC v. Shoppers

Choice.com, LLC, 963 F.3d 1371, 2020 U.S.P.Q.2d 10725 (Fed.

Cir. 2020). The Federal Circuit Court of Appeals vacated and

remanded the district court’s denial of attorney fees following a

judgment invalidating the patent claim. The district court failed to

address the patent owner’s manner of litigation and to sufciently

address the objective weakness of the assertion. The Federal Cir-

cuit found an abusive pattern of the patent owner’s litigation. The

Federal Circuit also found that the district court failed to consider

other conclusions in relevant cases for the same patent owner.

Claim Preclusion

PersonalWeb Technologies LLC v. Patreon, Inc., 961 F.3d 1365,

2020 U.S.P.Q.2d 10666 (Fed. Cir. 2020). The Federal Circuit

afrmed the district court’s decision that the current lawsuits

against Amazon’s customers were barred by the dismissal of a

lawsuit against Amazon. The patentee initially led suit against

Amazon and a single customer. After claim construction, the

case was dismissed with prejudice. The patentee subsequently

John C. Gatz is a member of the rm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers:

Copyrights: Jenni Psihoules, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K. Barnett,

Johnson & Johnson; R. Trevor Carter, Daniel M. Lechleiter, and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP;

Robert W. (Bill) Mason, Southwest Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan,

FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumeneld & Shereff LLP.

sued Amazon’s customers, alleging infringement of the same

patents. The Federal Circuit afrmed the dismissal, nding the

requirements for claim preclusion had been met.

Indeniteness

Pacic Coast Building Products, Inc. v. CertainTeed Gypsum,

Inc., No. 2019-1524, 2020 WL 3526401, 2020 U.S.P.Q.2d

10720 (Fed. Cir. June 30, 2020). The Federal Circuit found

that the term “scored exural strength” was indenite because

there were multiple tests for measuring the scored exural

strength of drywall. The specication disclosed using the

ASTM standard, but the ASTM standard includes multiple

materially different tests, and the specication did not pro-

vide any guidance as to which one to use.

Invalidity

Immunex Corp. v. Sandoz Inc., 964 F.3d 1049, 2020 U.S.P.Q.2d

10724 (Fed. Cir. 2020). The Federal Circuit afrmed the district

court’s holding that Sandoz failed to show that the patents were