September 2012

By: James Kachmar

The Ninth Circuit recently revisited the “Work Made for Hire” Doctrine in connection with a copyright infringement case in US Auto Parts Network, Inc. v. Parts Geek, LLC.  The Ninth Circuit concluded that an employer can be the owner of copyrighted material when it is prepared by an employee in the course of his or her employment under the work made for hire doctrine.

The case arose out of an online auto part business, Partsbin, that was created in the mid-1990s.  Partsbin entered into a licensing agreement with a computer programmer, Lucas Thomason, who had prepared an order processing software program called Manager while self-employed.  Thomason gave Partsbin a “perpetual license to use” the Manager software.  Approximately a year later, Partsbin hired Thomason as its “director of eServices,” where he continued to make modifications and enhancements to the Manager software to fit Partsbin’s business changes.  Over the next several years Thomason, as a Partsbin employee, developed at least four more versions of the Manager software.  Partsbin became an internet success story and in 2006 was acquired by US Auto Parts Network (“USAP”).  The acquisition included its intellectual property.  After the acquisition USAP, hired many of Partsbin’s key employees, including Thomason.  Thomason’s primary role was to “manage” the Manager software by modifying and enhancing it to accommodate the needs of Partsbin.  His efforts created two additional versions of the Manager software.Continue Reading Copyrights and the Work for Hire Doctrine

By: Nathan Geronimo

In a recent case, the Ninth Circuit affirmed the district court’s grant of summary judgment based on the doctrine of laches.  But Justice Fletcher, in a concurring opinion, stressed the fact that the Court’s application of the doctrine to copyright infringement cases was out of step with decisions in other federal circuits, and is likely contrary to congressional intent.

In Petrella v. Metro Goldwyn Mayer, Inc. et al., the plaintiff, Paula Petrella  (“P. Petrella”) sued Metro Goldwyn Mayer (“MGM”) and others for alleged copyright infringement based on the defendants’ use of the movie Raging Bull, which is allegedly based on a book and two screenplays in which P. Petrella has a purported legal interest.  Retired boxer Jake LaMotta and his friend Frank Petrella worked together to write a book and two screenplays on LaMotta’s life.  The works were registered with the U.S. Copyright Office; one screenplay in 1963, the book in 1970, and the other screenplay in 1973.  In 1976, Frank Petrella and LaMotta assigned their rights in the three works to Chartoff-Winkler Productions, who subsequently assigned the motion picture rights to MGM in 1978.  Frank Petrella passed away in 1981, and his copyright renewal rights in the works passed to his daughter, P. Petrella.  (When an author dies prior to the beginning of a renewal period, his successors get his renewal rights even if the author previously assigned the rights.)Continue Reading Aging Bull? Laches Still a Valid Defense to Copyright Infringement Claims (For Now)

By: Audrey A. Millemann

The law of willful patent infringement has changed.  After the Federal Circuit’s decision in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003 (Fed. Cir. 2012), it will now be more difficult for patent owners to prove willful infringement and recover enhanced drawings.

In Bard, the plaintiff, Bard Peripheral, owned a patent covering blood vessel grafting technology.  Bard filed suit for patent infringement and the case was tried to a jury in the district court for the District of Arizona.  The jury found that Gore had infringed Bard’s patent and that the infringement was willful, awarding Bard $185 million in compensatory damages and $185 million in enhanced damages for willfulness.Continue Reading Willful Patent Infringement Now Harder to Prove

Jack Daniels “Old No. 7” Brand Tennessee Sour Mash Whiskey is marked with a distinctive black label including stylized white writing attached to a bottle of Tennessee’s finest sour mash whiskey.  For some, the image of a Jack Daniels bottle conjures images of drunken bar brawls, motorcycle gang members guzzling whiskey or the antics of inebriated 1980’s hard rock musicians.  But for Jack Daniels, the distinct black and white label on its Old No. 7 Brand whiskey represents valuable intellectual property which immediately identifies in the minds of consumers the distinct character and flavor of the contents of the bottle to which the label is affixed.  Because even those who do not consume Jack Daniels Sour Mash Whiskey recognize the label of this legendary intoxicating beverage, the Jack Daniels distillery actively confronts unauthorized users of its trademarked label in order to prevent its unauthorized use.

Many attorneys have written cease and desist letters on behalf of their clients, or at least have reviewed such letters after they have been received by clients.  These letters often are written in a fit of righteous indignation over the obvious theft of one’s brand, or the tarnishment and diminution of the value of a mark resulting from the use of a confusingly similar mark by another party.  More often than not, this results in a letter which is more capable of peeling paint off the walls or curling the recipient’s hair than it is able to clearly and concisely communicate the reasons why unauthorized use of a trademark can damage a trademark owner’s intellectual property.  Recently, however, a cease and desist letter written by counsel for Jack Daniels Distillery dispensed with the usual vitriol took a different approach.Continue Reading Jack Daniels Proves That You Can Catch More Flies With Whiskey