By Jeff Pietsch and Fabiola Larios

In a 4 to 4 split per curiam decision, the United States Supreme Court recently affirmed the judgment of the Ninth Circuit’s opinion in Omega S.A. v. Costco Wholesale Corp. which held that the first sale doctrine is not a defense to infringement claims on products imported in an unauthorized manner into the United States.

Omega S.A. (Omega) manufactured watches in Switzerland and sold the watches globally to consumers through authorized distributors and retailers. Omega first sold watches to authorized distributors overseas. Unidentified third parties eventually purchased the watches and sold them to ENE Limited, a New York Company, which in turn sold them to Costco Wholesale Corp (Costco). Costco then sold the watches to consumers in California. Omega originally authorized the foreign sale of the watches, but did not authorize their sale into the United States. Omega claims that by purchasing the watches bearing the copyrighted design which had been imported into the United Stated by third parties, Costco bypassed the authorized U.S. distribution channels thereby obtaining “gray market” goods. 

Continue Reading No First Sale Defense on Foreign-Made Copies

It’s with mixed emotions that we wish Matthew Massari farewell.  Matt is joining our client Nike’s legal department in Portland, Oregon.    A recent story by Bob Shallit tells the story well.

Sacramento attorney Matt Massari has just nabbed his "dream job" – with Nike Inc. in Beaverton, Ore. A former football All-American at UC Davis, Massari went to the University of Oregon for law school and did an internship there with Nike. The company’s campus was "magical," he says. The focus on sports is right up his alley.

He continued doing some outside legal work for Nike in associate stints at Downey Brand and Weintraub Genshlea Chediak Tobin & Tobin. Recently he got a call from Nike, asking him to join the company’s two-dozen-member in-house legal team.

Massari is getting good wishes from Scott Hervey, the Weintraub attorney who supervised him here. But Hervey jokes that he’s a little tired of having top talent lured away. Another associate ended up with a studio job with Paramount.  "If you want a real cool in-house job with a great company," Hervey says ruefully, "come work for me."

By Audrey A. Millemann

A patent may be infringed directly or indirectly. Direct infringement exists when the alleged infringer makes, uses, sells, offers to sell, or imports a patented product or performs a patented method. 35 U.S.C. § 271(a). Indirect infringement exists when the alleged infringer causes another to directly infringe a patent. 35 U.S.C. §271(b) and (c). 

There are two types of indirect infringement: inducing infringement and contributory infringement. Inducing infringement is essentially aiding and abetting another to infringe a patent. Section 271(b). Contributory infringement exists when the alleged infringer sells a component of a patented invention knowing that the component is especially made for use in an infringing product and not a staple article of commerce having substantial noninfringing uses. Section 271(c). 

Continue Reading Supreme Court Adopts Willful Blindness Standard for Inducing Patent Infringement

By Scott Hervey

A California statute signed into law in 2005 by Governor Schwarzenegger was struck down by the United States Supreme Court on June 27 for running afoul of the First Amendment. The law prohibited the sale or rental of “violent video games” to minors; violations were punishable by a civil fine of up to $1,000.   The statute defined a “violent video game” as games in “which the range of options available to a player includes killing, maiming, dismembering, or sexually assaulting an image of a human being, if those acts are depicted” in a manner that a “reasonable person, considering the game a whole, would find appeals to a deviant or morbid interest of minors,” that is “patently offensive to prevailing standards in the community as to what is suitable for minors,” and that “causes the game, as a whole, to lack serious literary, artistic, political or scientific value for minors.” The Supreme Court found the statute to be overreaching and invalid.

Continue Reading The Supreme Court Shoots Down California’s Violent Video Game Statute

by Nathan Geronimo

Earlier this month, the Ninth Circuit addressed the standard for evaluating a claim for trademark dilution under the Trademark Dilution Revision Act of 2006 (“TDRA”), 15 U.S.C. §1125(c). The TDRA is meant to protect a property right in a trademark. Dilution prevents the use of a famous mark by others in any manner that lessens the uniqueness of the mark. Under the TDRA’s predecessor, the Federal Trademark Dilution Act (“FTDA”) and cases under the FTDA, to pursue a claim for trademark dilution, the offending junior mark had to be “identical or nearly identical” to the mark it was diluting. The new standard represents a more holistic approach, applying factors that focus on, among other things, the degree of similarity between the two marks.

Continue Reading Levi’s Legal Department: The Ultimate Pocket Protectors