Intellectual Property Litigation

In California, an idea theft claim is based in large part on the California Supreme Court case of Desny v. Wilder. In Desny, the plaintiff Victor Desny wrote a script depicting the real-life story of Floyd Collins, a boy who made headlines after he was trapped in a cave eighty feet underground. In an effort to market his script, Desny called Billy Wilder, a writer, producer and director at Paramount Pictures. Desny could not get through to Wilder and subsequently stripped his script to the bare facts so that Wilder’s secretary could copy it in short-hand over the phone.  After reading his synopsis, Desny told Wilder’s secretary that Wilder and Paramount could use the script only if they paid him a reasonable amount for doing so. Shortly thereafter, Wilder created his own movie script mirroring Densy’s. Because Densy’s script was based on historical facts, and because Desny only conveyed the bare minimum of those facts to Wilder’s secretary, both parties conceded for the purpose of the appeal that the synopsis was not sufficiently original to form the basis of a federal copyright claim. The Court, however, held that Densy stated sufficient facts to establish the existence of an implied-in-fact contract between the parties. The California Supreme Court explained that where an idea is furnished by one party to another, a contract sometimes may be implied even in the absence of an express promise to pay; a contract exists where “the circumstances preceding and attending disclosure, together with the conduct of the offeree acting with knowledge of the circumstances, show a promise to pay.
Continue Reading An Idea Doesn’t Have to be Novel to be Stolen (In California)

In Apple Inc. et al. v. Hirshfeld, case number 5:20-cv-06128, in the U.S. District Court for the Northern District of California, the Court upheld the Patent Trial and Appeal Board’s (PTAB) practice of denying patent reviews due to looming trials in district court.
Continue Reading District Court Dismisses Challenge to PTAB’s Discretion to Deny Inter Partes Review

Calling it a “ball of confusion,” the Ninth Circuit recently considered a case involving the music of the Turtles, SiriusXM Satellite Radio, and whether royalties are owed under California copyright law for music dating prior to 1972. In doing so, the Ninth Circuit reviewed nearly 200 years of copyright law to reach its conclusion.

In a lawsuit that was originally filed in 2013 titled, Flo & Eddie, Inc. v. Sirius XM Radio, Inc., the Ninth Circuit confronted the issue of “whether digital and satellite radio stations have a duty to pay public performance royalties for pre-1972 songs under [California] copyright law.” The crux of the case turned on the meaning of the phrase, “exclusive ownership,” which the California legislature used in California’s copyright statute in 1872.
Continue Reading “Happy Together” – The Ninth Circuit Plays the Golden Oldies of Copyright Law

How many of the lawyers out there liked hypotheticals in law school? I did not, but this case prompted me to write one!  So, for those of you who enjoy hypotheticals, here it is:

Company A, a North Carolina LLC, owns four patents.  A new company is formed, Company B, a Texas LLC.  Company B has the same corporate address in North Carolina and the same five shareholders as Company A.  Company B conducts no business activities.  About 20 days after Company B is formed, Company A assigns its four patents to Company B, with an agreement that gives Company B the rights to sue for patent infringement only in the district court for the Western District of Texas.  (And assume that the Western District of Texas is a very fast and favorable court for plaintiffs in patent infringement cases.)  About ten days after the assignment, Company B files two lawsuits for patent infringement in the Western District of Texas, alleging that the defendants sell mobile devices that use third party applications that infringe the patents.  The defendants move to transfer the cases to the district court in the Northern District of California on grounds of convenience.  They allege that the Western District of Texas is not the proper venue because most of the third-party applications were researched and developed in the Northern District of California, while none were developed in the Western District of Texas, and several witnesses and inventors were located in the Northern District of California, while none were in the Western District of Texas.  Here’s the question: Should the district court for the Western District of Texas grant the motions to transfer?
Continue Reading You Can’t Manipulate Venue!