The facts in Mango v. BuzzFeed are fairly straight forward. Mango is a freelance photographer who licensed a photograph to the New York Post. The Post included the photo in a story and below the photo included Mango’s name – an attribution known in the publishing industry as a “gutter credit”. Three months after the story was published by the Post, BuzzFeed published a related story and included Mango’s photo. BuzzFeed did not get permission from Mango to use the photo. Further, BuzzFeed removed Mango’s name from the gutter credit. Mango sued for copyright infringement and for removal or alteration of copyright management information under the DMCA. Prior to trial BuzzFeed stipulated to liability on the copyright infringement claim, leaving Mango’s DMCA claim as the sole issue for the District Court Continue Reading
The Rule of Reasonableness: Non-Compete Provisions in California Business Contracts
Posted in IPThe California Supreme Court in the 2008 case, Edwards v. Arthur Andersen LLP, ruled that a provision in an employment agreement that prevented an employee from competing with his former employer following the termination of his employment was an invalid restraint on trade in violation of section 16600 of the California Business and Professions Code. The Court held that subject to certain statutory exceptions, i.e., to protect the value of goodwill in connection with the sale of one’s business interest, section 16600 invalidated all contractual provisions that constituted a restraint on an employee’s ability to practice his or her trade or profession. What the Court has not addressed since that 2008 decision was whether provisions that acted as a restraint on trade in business contracts (i.e. exclusive distribution agreements, franchise agreements, etc.) would suffer a similar fate. On August 3, 2020, the California Supreme Court issued its decision in Ixchel Pharma, LLC v. Biogen, Inc., and ruled that non-compete provisions in business to business contracts were not per se invalid, but rather subject to a rule of reasonableness. Continue Reading
Sushi Restaurants Battle for Control Over Hand Roll Trademark
Posted in IP, Trademark LawSushi Nozawa, LLC, owner of the popular sushi destination Sugarfish, is challenging the HRB Experience LLC over use of the term “Hand Roll Bar.” IP Attorneys Scott Hervey and Josh Escovedo discuss the lawsuit, including descriptive versus generic terms, secondary meaning, and the potential strategies of the parties.
You Must Prove Actual Damages if You Want Punitive Damages in an Infringement Action
Posted in IP, Trademark LawImagine litigating an infringement case for two years, and after a nine day jury trial, obtaining a jury’s verdict that says you’ve established infringement and awards your client $5,000,000. Then you realize that the jury has awarded your client $0 in actual damages, and the entire $5,000,000 sum is for punitive damages. The Ninth Circuit in an unpublished opinion in Monster Energy Company v. Integrated Supply Network, LLC (July 22, 2020), reiterated that a party is not entitled to punitive damages without a finding of actual damages.
Monster Energy Company is a well-known energy drink giant that does a lot of sponsorship in the motorsports area with its distinctive green M logo. In 2017, it sued Integrated Supply Network for infringement of its Monster marks. Integrated Supply is a Florida automotive-supply company that sold various Monster Mobile and ISN Monster lines of goods that Monster Energy Company claimed infringed on its marks. Continue Reading
Make Sure You Follow the Patent Local Rules!
Posted in IP, Patent LawAn unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules.
Patent local rules are rules that many federal district courts have for patent infringement cases. These rules supplement the regular local rules for that court and the Federal Rules of Civil Procedure, and allow the courts that have a lot of patent infringement cases to more efficiently manage those cases. Patent local rules are also helpful to the parties and their counsel, as they provide a standard structure and some certainty to the litigation process. Continue Reading
Irreparable Harm for Permanent Injunction Supported by Lost Profits Award
Posted in IP, Patent LawIn f’real Foods, LLC et al v. Hamilton Beach Brands, Inc. et al, 1-16-cv-00041 (DDE 2020-07-16, Order) (Colm F. Connolly), plaintiffs freal Foods, LLC and Rich Products Corporation sued defendants Hamilton Beach Brands, Inc. and Hershey Creamery Company for infringement of four patents on four accused products that are high performance blenders manufactured by Hamilton Beach. After a four-day jury trial, the jury found that all four accused products infringed various claims of the asserted patents, and that none of the asserted patents are invalid. The Court then turned to the plaintiffs’ motion for a permanent injunction.
The Court first noted that a plaintiff seeking a permanent injunction must demonstrate the four eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,391 (2006) factors: “( 1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and ( 4) that the public interest would not be disserved by a permanent injunction.” To satisfy the irreparable injury factor, a patentee must establish ( 1) that absent an injunction it will suffer irreparable injury and (2) that a sufficiently strong causal nexus relates the injury to the infringement. The Court also noted that the Supreme Court has cautioned lower courts that “[a]n injunction is a drastic and extraordinary remedy, which should not be granted as a matter of course” and when “a less drastic remedy … [is] sufficient to redress [ a plaintiffs] injury, no recourse to the additional and extraordinary relief of an injunction [is] warranted.” Continue Reading
After Nearly 30 Years of Controversy, the Washington Redskins Will Retire the Redskins Team Name and Trademark
Posted in IP, Trademark LawWatch: Author Josh Escovedo and trademark law professor Alexandra Roberts delve into the issues around the Redskins name change.
On Monday, July 13, 2020, the ownership group of the Washington Redskins (the “Team”) announced that it will abandon the Redskins team name after nearly 30 years of controversy. The decision, despite what the Team says, is likely the product of societal pressure, which was reinforced by powerful corporations, such as Nike and Amazon, that refused to sell Redskins merchandise because of the Team’s disparaging moniker. Within days of the corporations refusing to sell their merchandise, the Team announced that it would undertake a “thorough review” of its name. Just over a week later, the Redskins announced that the name would be “retire[d].” But before you give the Team too much credit, let’s consider what it took to get here. Continue Reading
The “Wolf of Wall Street” Defamation Suit – The Risk of an “Inspired By” Character in Movies and TV
Posted in Entertainment Law, IPThe motion picture Wolf of Wall Street was based on a book of the same title written by Jordan Belmont. In the book, Andrew Greene, who was director, general counsel, and head of the corporate finance department at Stratton Oakmont between 1993 and 1996, was discussed extensively. In the book, Greene is referred to by his nickname “Wigwam” (a reference to his toupee) and described as engaging in criminal conduct. In the motion picture, Wolf of Wall Street a minor character named Nicky Koskoff, who wears a toupee and went by the nickname “Rugrat” is depicted as engaging in unsavory and illegal behavior. This includes engaging in adulterous/sexual acts at work and participating in criminal money laundering schemes orchestrated by one of the founders of Stratton Oakmont, Jordan Belmont (played by Leonardo DiCaprio). Greene sued Paramount Pictures and the film’s producers on the grounds that the Koskoff character presented a defaming portrayal of himself. Continue Reading
The PTAB Requires Settlement and Collateral Agreements to Terminate IPRs
Posted in IP, Patent LawFollowing the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office (“USPTO”). Such challenges are often brought by petitioners in response to a patent owner suing them for patent infringement. But what happens to the IPR if the parties settle the infringement lawsuit?
When parties settle the underlying dispute, they can request that the IPR be terminated. Under 35 U.S.C. § 317(a),
An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.
However, under 35 U.S.C. § 317(b), any settlement agreement, including any collateral agreements that are referenced, must be filed with the USPTO before the termination of the IPR. Specifically, the statute states:
Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. Continue Reading
“Birds of a Feather” – The Ninth Circuit Confronts “Single Unit of Publication” Copyright Issue
Posted in Copyright Law, IPUnicolors, Inc. creates and markets artistic design fabrics to various garment manufacturers. Some of these designs are marketed to the public and placed in its showroom while other designs are considered “confined” works that Unicolor sells to certain customers. Unicolors withholds marketing them to the general public for a set period of time. In order to save money, Unicolors often times groups various designs into a “single work” when filing with the U.S. Copyright office for copyright registration. The Ninth Circuit in Unicolors v. H&M Hennes & Mauritz (May 29, 2020), recently addressed whether this practice, grouping both public and “confined” works into a single registration application, creates a valid copyright that Unicolors could enforce. Continue Reading
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