News & Cases

Case Summaries

Copyright

[06/22] Recording Indus. Assn. of Am. v. Library of Cong.
In the Recording Industry Association of America's petition for review of the Copyright Royalty Board's decision instituting a 1.5 percent per month late fee for late royalty payments, and implementing a penny-rate royalty structure for cell phone ringtones (under which copyright owners received 24 cents for every ringtone sold using their copyrighted work), the petition is denied where: 1) the Board appropriately took market evidence into account when imposing a late fee; 2) a copyright owner's ability to terminate a section 115 license in no way barred the imposition of a late fee; and 3) even if it were true that divided interests in a copyright made it difficult to make timely payments to each copyright owner, that fact would in no way counsel against the imposition of a late fee.

[06/21] Golan v. Holder
In an action challenging the constitutionality of Section 514 of the Uruguay Round Agreements Act (URAA), which granted copyright protection to various foreign works that were previously in the public domain in the U.S., summary judgment for plaintiffs is reversed where: 1) the government's interest in securing protections abroad for American copyright holders satisfied this substantial government interest standard; 2) Congress had substantial evidence from which it could reasonably conclude that the ongoing harms to American authors were real and not merely conjectural; and 3) there was substantial evidence from which Congress could conclude that Section 514 would alleviate these harms to American copyright holders.

[06/15] Penguin Group (USA) Inc. v. Am. Buddha
In a copyright infringement action in which the district court dismissed the action for lack of personal jurisdiction, the Second Circuit certifies the following question to the New York Court of Appeals: In copyright infringement cases, is the situs of injury for purposes of determining long-arm jurisdiction under N.Y. C.P.L.R. section 302(a)(3)(ii) the location of the infringing action or the residence or location of the principal place of business of the copyright holder?

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Intellectual Property

[06/28] Bilski v. Kappos
In a patent application seeking protection for a claimed invention explaining how commodities buyers and sellers in the energy market could protect, or hedge, against the risk of price changes, the denial of the application is affirmed where: 1) the machine-or-transformation test is not the sole test for patent eligibility under 35 U.S.C. section 101; 2) Section 101 precluded a reading of the term "process" that would categorically exclude business methods; and 3) even though petitioners' application was not categorically outside of section 101 under the two atextual approaches the Court rejected today, that did not mean it was a "process" under section 101.

[06/23] Lincoln Nat'l Life Ins., Co. v. Transamerica Life Ins., Co.
In a suit for patent infringement, related to computerized methods for administering variable annuity plans, district court's denial of defendants' motion for summary judgment as a matter of law that it does not infringe the claims at issue of the '201 patent is reversed and remanded where: 1) the district court erred in denying defendants' motion for JMOL of noninfringement as the evidence on the record does not support jury's verdict of infringement; and 2) because defendant did not infringe, its argument that the district court abused its discretion by refusing to grant it leave to amend its complaint to assert a claim for invalidity under 35 U.S.C. section 101 need not be addressed.

[06/21] Golan v. Holder
In an action challenging the constitutionality of Section 514 of the Uruguay Round Agreements Act (URAA), which granted copyright protection to various foreign works that were previously in the public domain in the U.S., summary judgment for plaintiffs is reversed where: 1) the government's interest in securing protections abroad for American copyright holders satisfied this substantial government interest standard; 2) Congress had substantial evidence from which it could reasonably conclude that the ongoing harms to American authors were real and not merely conjectural; and 3) there was substantial evidence from which Congress could conclude that Section 514 would alleviate these harms to American copyright holders.

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Patent

[06/28] Bilski v. Kappos
In a patent application seeking protection for a claimed invention explaining how commodities buyers and sellers in the energy market could protect, or hedge, against the risk of price changes, the denial of the application is affirmed where: 1) the machine-or-transformation test is not the sole test for patent eligibility under 35 U.S.C. section 101; 2) Section 101 precluded a reading of the term "process" that would categorically exclude business methods; and 3) even though petitioners' application was not categorically outside of section 101 under the two atextual approaches the Court rejected today, that did not mean it was a "process" under section 101.

[06/23] Lincoln Nat'l Life Ins., Co. v. Transamerica Life Ins., Co.
In a suit for patent infringement, related to computerized methods for administering variable annuity plans, district court's denial of defendants' motion for summary judgment as a matter of law that it does not infringe the claims at issue of the '201 patent is reversed and remanded where: 1) the district court erred in denying defendants' motion for JMOL of noninfringement as the evidence on the record does not support jury's verdict of infringement; and 2) because defendant did not infringe, its argument that the district court abused its discretion by refusing to grant it leave to amend its complaint to assert a claim for invalidity under 35 U.S.C. section 101 need not be addressed.

[06/18] Encyclopedia Britannica, Inc. v. Alpine Elec. of Am., Inc.
In a patent infringement suit by Encyclopedia Britannica against various defendants, involving patents relating to a multimedia database search system for retrieving textual and graphical information, district court's grant of summary judgment in favor of defendants in declaring the patents invalid as anticipated by foreign patent application is affirmed as section 120 requires each application in the chain of priority to refer to the prior applications, and here, the patents in suit cannot claim priority as the '955 application failed to specifically reference the earlier filed '917 application and did not claim priority to the '917 application.

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Trade Secrets

[05/19] R.C. Olmstead, Inc. v. CU Interface, LLC
In a copyright and trade secret infringement suit brought by a provider of credit union software against the developer of a competing credit union software, district court's grant of summary judgment in favor of the defendant is affirmed where: 1) district court did not abuse its broad discretion in refusing to compel additional discovery and plaintiff can point to no errors of fact or law in the court's denial of its employees access to defendant's software; 2) district court did not abuse its discretion in barring the use of an expert's report because the report failed to comply with the requirements of Fed. Rule of Civ. Proc. 26(a)(2)(B); 3) plaintiff was not entitled to take the deposition of defendant's expert witness because defendant designated him as a non-testifying expert; 4) district court did not abuse its discretion in declining to impose a sanction on defendant because plaintiff was not left without a remedy for any harm caused by the third party's spoliation; 5) defendant was entitled to summary judgment on the merits on the copyright infringement claims because plaintiff has not produced any direct evidence of copying and indirect evidence of copying was not sufficient to create a fact question as to whether copying occurred; and 6) district court correctly held that plaintiff's end user product was not a trade secret because plaintiff did not take reasonable steps to maintain its secrecy.

[05/11] Nationwide Mut. Ins. Co. v. Mortensen
In an action arising out of the retention of policyholder information by former insurance agents for plaintiff, summary judgment dismissing both plaintiff's claims and defendants' counterclaims is affirmed where: 1) the policyholder information was readily available from another source, and thus did not qualify as a trade secret as a matter of law; 2) plaintiff effectively abandoned its breach of fiduciary duty claim on appeal because it failed to challenge the district court's determination that it could not prove damages on that claim; 3) the agents did not qualify as employees covered by ERISA as a matter of law; and 4) the agents pointed to no evidence showing that plaintiff's allegedly unfair trade practices resulted in an ascertainable loss.

[04/29] Silvaco Data Sys. v. Intel Corp.
In plaintiff's suit against Intel Corporation alleging that it misappropriated certain trade secrets used by plaintiff in its software products, judgment of the trial court in favor of the defendant is affirmed where: 1) Intel cannot be liable if it never possessed or had access to the source code but only had executable, machine-readable code compiled by its supplier from source code; and 2) plaintiff failed to plead a viable claim not based upon a misappropriation of trade secrets.

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Trademark

[06/03] Amazing Spaces, Inc. v. Metro Mini Storage
In an action alleging infringement of a star design that plaintiff claimed as a service mark, summary judgment for defendant is affirmed in part where: 1) the record evidence was replete with similar or identical five-pointed stars, both raised and set in circles, and used in similar manners, such that -- notwithstanding the residual evidence of the presumption of validity -- no reasonable jury could find that the star symbol was even a mere refinement of this commonly adopted and well-known form of ornamentation; and 2) plaintiff failed to raise a fact issue regarding the existence of secondary meaning with respect to the symbol. However, the judgment is reversed in part where plaintiff had not yet had the opportunity to introduce evidence relating to its trade dress claims.

[05/26] Deere & Co. v. Int'l Trade Comm'n
The judgment of the International Trade Commission finding that the sales of European version self-propelled John Deere forage harvesters in the U.S. by intervenors did not violate section 337 of the Tariff Act is vacated and remanded as, although the Commission's determination that the sales of the European-version harvesters in the U.S. by official Deere dealers were authorized is supported by substantial evidence, the Commission improperly applied the "all or substantially all" test.

[05/24] American Needle, Inc. v. Nat'l Football League
In an antitrust action challenging the NFL's grant to Reebok of an exclusive license to create apparel incorporating the NFL's intellectual property, the Seventh Circuit's affirmance of summary judgment for defendants is reversed where the alleged conduct related to licensing of intellectual property constituted concerted action that was not categorically beyond the coverage of Section 1 of the Sherman Act.

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