The U.S. District Court for the Central District of California handed a big victory to Warner Bros. when it ruled that Gotham Garage violated Warner Bros.’ intellectual property rights in the iconic Batmobile.  There was a question whether Warner Bros.’ rights in the Batman franchise would prohibit the production of an automobile designed like the Batmobile since the Copyright Act does not protect automobile designs.  The Court found that the Batmobile was a protectable character of the Batman franchise and the replicas manufactured by defendant were infringing derivative works.

Gotham Garage manufactured and produced custom cars modeled after vehicles found in various television shows and movies. It had been producing and selling replica vehicles based on the 1966 and 1989 Batmobiles. Gotham Garage also manufactured automobile parts featuring the Batman trademarks and did business in a manner utilizing various Batman trademarks. Warner Bros. filed a lawsuit In May 2011 alleging that Gotham Garage infringed the copyrighted versions of the 1966 and 1989 Batmobile and infringed various Batman trademarks in the marketing and selling of its custom vehicles.

The court made easy work of the trademark claims. The Court noted that Gotham Garage did not contest Warner Bros.’ trademark claims, and did not dispute that it manufactured and distributed parts and accessories featuring the Batman trademarks and used the Batman trademarks in connection with the operation of its business.  The Court found that Gotham Garage’s use of the Batman trademarks caused a likelihood of confusion; that consumers were likely to be confused as to the source of the products.  The defendant admitted that “most of his potential customers ask if he had a relationship with Warner Bros. or was licensed by Warner Bros.”   The Court found that this initial interest and confusion impermissively capitalizes on the goodwill associated with the Batman trademarks. Continue Reading Holy Lawsuit Batman

Most law students learn early in law school the old maxim: “Bad facts make bad law.” A recent Ninth Circuit case, Garcia v. Google, Inc., seems certain to test this propositionwith its incredibly sympathetic facts.

Ms. Garcia, an aspiring actress, was paid approximately $500 to appear in a minor role that she believed to be an Arabian adventure movie titled, “Desert Warrier.” Instead, a clip of her performance was used in an anti-Islamic film titled, “Innocence of Muslims,” which was posted to YouTube. (Google is the owner of YouTube.) Not only was her performance included in this movie, but her lines had been “dubbed over” so that the line audiences heard her say was “Is your Mohammed a child molester?” The film and this line provoked anger worldwide and an Egyptian cleric issued a fatwa calling for the killing of everyone involved with the film. Shortly thereafter, Ms. Garcia began receiving death threats.

Continue Reading A Bit Part, A Fatwa and Copyright Infringement

The United States Supreme Court was presented with the question of who has the burden of proof when a licensee files an action seeking a declaration of non-infringement against the patentee. In Medtronic Inc. v. Mirowski Family Ventures, 187 L.Ed.2d 703 (Jan. 22, 2014), the Supreme Court reviewed a decision by the Federal Circuit Court, which held that the plaintiff licensee has the burden of proving non-infringement. The Federal Circuit Court, in interpreting the Declaratory Judgment Act, found that Medtronic, as the plaintiff, carried the burden of proof to prove all elements of its claim, as does any other plaintiff. The Supreme Court reversed.

The defendant, Mirowski Family Ventures (“Mirowski”), owned numerous patents relating to implantable heart stimulators. Medtronic entered into a license with Mirowski to practice certain of Mirowski’s patents in exchange for royalties. Pursuant to the terms of the license, Mirowski notified Medtronic of Mirowski’s contention that several of Medtronic’s products violated Mirowski’s patents and, therefore, additional royalties were due. Medtronic disputed the claim, filed an action for declaratory relief, and accrued the disputed unpaid royalties in an escrow account as permitted under the license.

Continue Reading PATENT HOLDERS BEAR THE BURDEN OF PROOF EVEN AS A DEFENDANT

By: Audrey A. Millemann

On January 22, 2014, the United States Supreme Court decided that a patent owner has the burden of proving infringement in an action filed by a licensee for a declaratory judgment of noninfringement. This case, Medtronic, Inc. v. Mirowski Family Ventures, LLC, 2014 U.S. LEXIS 788 (2014), reversed a Federal Circuit Court of Appeals decision holding that in such a case, the burden of proof shifts to the licensee to prove it did not infringe.

In 1991, Medtronic and Mirowski entered into a license. Medtronic made medical devices, including cardiac devices, and Mirowski owned patents covering heart simulator implants. The license provided that if Mirowski believed that a new product of Medtronic was covered by the patents, Mirowski would give notice to Medtronic. Medtronic could then choose one of three options: agree to pay royalties for the new product, pay royalties and also challenge Mirowski’s finding of infringement, or not pay royalties, when which would allow Mirowski to terminate the license and sue Medtronic for patent infringement. The parties later modified the license to allow Medtronic to pay royalties into an escrow account if it decided to challenge Mirowski’s finding of infringement, with the winner receiving those royalties.

Continue Reading Patent Owners have Burden of Proof in Declaratory Judgment Actions

By: Scott Hervey

Every practitioner should teach law school at least once. This year I am teaching Entertainment Law at the University of California at Davis. (Although flying up from and back to L.A. once a week can be a bit of a drag, so far it is a good experience.) Finding issues to trigger discussion and debate in class is forcing me to look at cases much differently. Since I already know the general holdings of the cases I am teaching, I find myself spending more time analyzing the dissenting opinion and loosing party’s position, looking for points that can foster robust in-class discussion. This week, in preparing for a class session on right of publicity, I re-read the recent 9th Circuit case of Keller v. Electronic Arts and found myself questioning whether the courts have changed the Transformative Use test set forth by the California Supreme Court and used to analyze a conflict between right of publicity and First Amendment protected speech.

The facts of Keller are straight forward. Electronic Arts produced an NCAA Football series of video games which allowed users to control avatars representing college football players and participate in simulated football games. In NCAA Football, EA replicated each school’s entire team as accurately as possible and every football player avatar had a jersey number and virtually identical height, weight, build, skin tone, hair color and home state as each real life player. EA’s player avatars reflect all of the real life attributes of the NCAA players; the only exception is that EA omitted the real life player’s name from the corresponding avatar and assigned the avatar a hometown that is different from the real player’s hometown.

Continue Reading Did The California Court Of Appeals Transform The Transformative Use Test in Right of Publicity Cases?