News

Case Summaries

Commercial Law

[11/04] DMA Int'l., Inc. v. Qwest Comms. Int'l., Inc.
In an appeal from the district court's denial of petitioner's motion to vacate an arbitral award, the order is affirmed where the arbitrator's factual findings regarding the meaning of the contract at issue could not be overturned simply because the evidence was conflicting. In addition, attorney's fees are awarded to respondent because petitioner's appeal vexatiously multiplied the proceedings.

[11/04] Memphis Biofuels, LLC. v. Chicksaw Nation Indus., Inc.
In plaintiff's case against the defendants for repudiating an agreement whereby defendant was to deliver diesel fuel and soybean oil to plaintiff's refinery facility, dismissal of the suit for lack of subject matter jurisdiction is affirmed as the defendant, a federally chartered tribal corporation, enjoys tribal-sovereign immunity.

[11/03] Applied Med. Dist. Corp. v. Surgical Co. BV
In an appeal from the district court's denial of an injunction barring defendant from pursuing an action against plaintiff in Belgium, the order is reversed where: 1) the district court applied the wrong legal standard by requiring that the claims in the domestic and foreign action be identical, instead of engaging in the required functional inquiry concerning dispositiveness; and 2) the district court relied on the clearly erroneous factual determination that defendant's Belgian claims, other than goodwill indemnities, were available apart from termination.

[11/03] Imation Corp. v. Koninklijke Philips Elec. N.V.
In plaintiff's case against defendants arising from a patent license agreement dispute, judgment on the pleadings in favor of defendants is reversed and remanded where: 1) the district court erred in finding that plaintiff's subsidiaries are not licensed under the parties' patent licensing Agreement; and 2) the unambiguous Agreement makes clear that the license grant includes subsidiaries of plaintiff and defendant that meet the Agreement's Subsidiary definition.

[10/29] Zhang v. Sup. Ct.
In plaintiff's action against her insurer over disputes arising from a fire of her commercial premises, district court's ruling sustaining defendant's demurrer to a cause of action under the Unfair Competition Law (UCL), Business and Professions Code section 17200, is vacated and remanded with directions to reinstate the cause of action as an insurer connected with conduct that would violate Insurance Code section 790.03 can also give rise to a private civil cause of action under the UCL.

[10/29] Schering-Plough Healthcare Prod., Inc.
In plaintiff's Lanham Act suit against defendants involving an oral laxative and over-the-counter versions of the drug manufactured by defendants, dismissal of plaintiff's complaint without prejudice is affirmed as the FDA is conducting a proceeding to determine whether defendants' drugs are misbranded now that there is an over-the-counter version of the drug.

[10/28] Laster v. AT&T Mobility LLC
In a class action claiming that a telephone company's offer of a "free" phone to anyone who signed up for its service was fraudulent to the extent the phone company charged the new subscriber sales tax on the retail value of each "free" phone, denial of defendant's motion to compel arbitration is affirmed where an arbitration clause's "premium" payment in the event of an arbitral award in favor of a customer did not prevent the clause from being unenforceable under California law.

[10/28] Cohen v. DIRECTV, Inc.
In subscriber's suit against defendant for disseminating false advertising to induce him and others to purchase more expensive high definition services, trial court's order denying plaintiffs' motion for class certification is affirmed as the trial court did not apply an improper criterion in addressing the class certification issue and because it stated at least one valid reason for denying the motion for class certification.

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Contracts

[11/06] In re: Smith
Order of the Bankruptcy Appellate Panel reversing an order of the Bankruptcy Court is affirmed as a late alimony payment penalty was not a domestic support obligation, and as such, the ex-wife's claim was a general unsecured claim not entitled to priority status and consequently dischargeable.

[11/06] Ferro Corp. v. Cookson Group, PLC
In plaintiff's suit against defendant for breach of its duty to defend and indemnify arising from antitrust lawsuits brought against plaintiff, summary judgment for defendants and dismissal of all of plaintiff's claims is affirmed as there are no allegations made against plaintiff in the antitrust complaints or amended complaints based on principles of successor liability, and the antitrust cases do not state claims that potentially or arguably fall within the purview of the asset purchase agreement duty to defend.

[11/05] Solana v. GSF Dev. Driller I
In an admiralty action for a percentage of the salvage value of a drilling unit, summary judgment for defendant is reversed where the record did not support the district court's conclusion that, as a matter of law, the parties agreed that the plaintiffs would be compensated in the same manner that they had previously been compensated by defendant.

[11/05] General Star Nat. Ins. Co. v. Universal Fabricators, Inc.
In an action claiming that defendant insurer was bound by the terms of an excess insurance policy it had issued to contribute to the satisfaction of a state-court judgment of liability in a personal injury action against two entities for whom the insured had been a contractor, summary judgment for plaintiffs is reversed where the district court erred in deciding that the state-court judgment established legal liability against the insured.

[11/04] DMA Int'l., Inc. v. Qwest Comms. Int'l., Inc.
In an appeal from the district court's denial of petitioner's motion to vacate an arbitral award, the order is affirmed where the arbitrator's factual findings regarding the meaning of the contract at issue could not be overturned simply because the evidence was conflicting. In addition, attorney's fees are awarded to respondent because petitioner's appeal vexatiously multiplied the proceedings.

[11/04] Memphis Biofuels, LLC. v. Chicksaw Nation Indus., Inc.
In plaintiff's case against the defendants for repudiating an agreement whereby defendant was to deliver diesel fuel and soybean oil to plaintiff's refinery facility, dismissal of the suit for lack of subject matter jurisdiction is affirmed as the defendant, a federally chartered tribal corporation, enjoys tribal-sovereign immunity.

[10/30] Toal v. Tardif
In plaintiffs' petition for confirmation of an arbitration award against defendants, trial court's grant of plaintiff's petition is reversed as plaintiffs failed to prove a basic prerequisite of private arbitration, the existence of a valid arbitration agreement, and the signature of defendants' attorney on the arbitration stipulation, standing alone, did not constitute substantial evidence that defendants agreed to arbitrate the dispute.

[10/30] Lake Almanor Assoc., LLP. v. Huffman-Broadway Group, Inc.
In plaintiff-developer's breach of contract and negligence case against a consultant hired by a county to prepare an environmental impact report (EIR), district court's sustaining of defendant's demurrer to plaintiff's complaint is affirmed as the balance of the factors militates against a conclusion that a consultant owes a duty of care to a project applicant in the timely completion of a draft EIR.

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Copyright

[11/05] Schrock v. Learning Curve Int'l, Inc.
In plaintiff's copyright infringement action against defendant who had hired him to take photos of the "Thomas & Friends" toy train characters for use in promotions, district court's dismissal of his complaint is reversed where: 1) the photos qualify for the limited derivative-work copyright provided by section 103(b) as plaintiff's artistic and technical choices combine to create a two-dimensional image that is subtly but nonetheless sufficiently his own; and 2) district court erred in concluding that plaintiff needed defendant's permission to copyright the photos, as there is nothing in the Copyright Act requiring the author of a derivative work to obtain permission to copyright his work from the owner of the copyright in the underlying work.

[11/04] Bridgeport Music, Inc. v. UMG Recordings, Inc.
In plaintiff's copyright-infringement case against defendant for infringement of its copyright on George Clinton's song, based on the use of the phrase "Bow wow wow, yippie yo, yippie yea", district court's finding that defendant willfully infringed plaintiff's rights in the song and an award of statutory damages of $88,980 are affirmed where: 1) the jury instructions were not erroneous as a matter of law; and 2) the district court did not abuse its discretion in declining to give the instructions requested by the defendant.

[10/21] Bridgeport Music, Inc. v. Universal-MCA Music Publ'g., Inc.
In plaintiffs' lawsuit against defendants, alleging copyright infringement and various state law claims relating to the use of samples in rap recordings, district court's denial of defendants' motion requesting that attorney's fees be imposed as a condition of granting plaintiffs' motions to voluntarily dismiss without prejudice the twenty cases at issue is affirmed as the district court did not abuse its discretion either by failing to provide specific reasons for its decision, or by deciding not to impose attorney's fees as a condition of dismissal under Rule 41(a)(2).

[09/25] Cincom Sys., Inc. v. Novelis Corp.
In a copyright infringement case involving software licensing agreements, district court's summary judgment to plaintiff is affirmed as defendant did not abide by the express terms of plaintiff's license and gain prior written approval before impermissibly transferring the software license when it underwent internal reorganization.

[09/16] Art Attacks Ink, LLC v. MGA Ent'mt. Inc.
In a copyright, trademark, and trade dress infringement action, judgment as a matter of law for defendant on copyright and trade dress infringement claims is affirmed where: 1) defendant did not timely move for judgment as a matter of law, but the time limit under Fed. R. Civ. P. 50(b) is not jurisdictional; and 2) plaintiff failed to demonstrate that defendant had access to plaintiff's copyrighted works or that plaintiff's trade dress had acquired secondary meaning.

[08/24] SCO Group, Inc. v. Novell, Inc.
In an action for slander of title regarding statements made by defendant about its alleged ownership of certain software copyrights, summary judgment for defendant is reversed where: 1) the parties' agreement satisfied the Copyright Act's writing requirement; and 2) the admissible evidence concerning the ambiguous contract language regarding copyright ownership was not so one-sided as to warrant summary judgment.

[08/21] Arista Records, LLC v. Launch Media, Inc.
In a copyright infringement action, an order finding that LAUNCHcast, a music webcasting service that provides users with individualized internet radio stations, did not constitute an interactive service under 17 U.S.C. 114(j)(7) is affirmed where: 1) a user could not request a particular song on demand through defendant's service; and 2) defendant's service did not provide a program specially created for the user.

[08/14] R.W. Beck, Inc. v. E3 Consulting, LLC
In a copyright infringement action based on Defendant's alleged copying of Plaintiff's independent-engineer reports, summary judgment for Defendant is affirmed in part, where Plaintiff's state-law claims were preempted by the Copyright Act; but reversed in part, where Plaintiff created genuine disputes of material fact by presenting evidence that: 1) Plaintiff did not take the language in its copyrighted reports from a third-party report; and 2) the copyrighted reports derived their language from earlier, nonpublic reports prepared by Plaintiff.

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Dispute Resolution & Arbitration

[11/04] DMA Int'l., Inc. v. Qwest Comms. Int'l., Inc.
In an appeal from the district court's denial of petitioner's motion to vacate an arbitral award, the order is affirmed where the arbitrator's factual findings regarding the meaning of the contract at issue could not be overturned simply because the evidence was conflicting. In addition, attorney's fees are awarded to respondent because petitioner's appeal vexatiously multiplied the proceedings.

[11/04] Memphis Biofuels, LLC. v. Chicksaw Nation Indus., Inc.
In plaintiff's case against the defendants for repudiating an agreement whereby defendant was to deliver diesel fuel and soybean oil to plaintiff's refinery facility, dismissal of the suit for lack of subject matter jurisdiction is affirmed as the defendant, a federally chartered tribal corporation, enjoys tribal-sovereign immunity.

[10/30] Toal v. Tardif
In plaintiffs' petition for confirmation of an arbitration award against defendants, trial court's grant of plaintiff's petition is reversed as plaintiffs failed to prove a basic prerequisite of private arbitration, the existence of a valid arbitration agreement, and the signature of defendants' attorney on the arbitration stipulation, standing alone, did not constitute substantial evidence that defendants agreed to arbitrate the dispute.

[10/29] Johnson v. Greenelsh
In proceedings involving an arbitration petition by one co-trustee of a family trust and plaintiff-co-trustee's petition to enforce a no contest clause, appellate court's judgment against defendant-co-trustee is reversed as a challenge to a surviving spouse's mental capacity to transfer trust assets and appoint a successor trustee did not violate the no contest clause in a family trust. A proceeding contesting a settlor's mental competence to exercise rights under a trust does not amount to an attack on the trust itself, unless it seeks to thwart the estate plan established by the trust.

[10/28] Laster v. AT&T Mobility LLC
In a class action claiming that a telephone company's offer of a "free" phone to anyone who signed up for its service was fraudulent to the extent the phone company charged the new subscriber sales tax on the retail value of each "free" phone, denial of defendant's motion to compel arbitration is affirmed where an arbitration clause's "premium" payment in the event of an arbitral award in favor of a customer did not prevent the clause from being unenforceable under California law.

[10/20] Joan Hansen & Co. v. Everlast World's Boxing Headquarters Corp.
In an action seeking an order of contempt for violation of a confirmed arbitral award, the appellate division's denial of defendant's motion to stay plaintiff's motion to reopen the arbitration is reversed where, after issuance of an arbitration award, a party may not seek to reopen the arbitration proceeding to request that the arbitrators consider an issue that was not previously presented to the panel.

[10/20] Burlage v. Sup. Ct.
In plaintiffs' dispute over the sale of a house purchased from defendant, trial court's decision to vacate the arbitrator's award in favor of the plaintiffs is affirmed and plaintiffs' petition for writ of mandate denied as the arbitrator excluded material evidence that substantially prejudiced defendant pursuant to Code of Civil Procedure section 1286.2

[10/15] Seidemann v. Bowen
In a First Amendment action alleging that a professor's union impermissibly charged plaintiff a pro rata share of expenses unrelated to the union's collective bargaining duties, summary judgment for defendant is reversed where: 1) a public-sector union's political activities aimed at securing a new contract may be chargeable to nonmembers if those activities are pertinent to the union's role as a collective bargaining representative; 2) nonmembers may be required to subsidize lobbying efforts undertaken by a "parent" union of the local public-sector union if the lobbying is related to collective bargaining and may ultimately inure to the benefit of local union members; 3) the district court erred in upholding the union's charges to nonmembers for (a) political activity undertaken to secure a new contract, (b) lobbying by the local union's state affiliate, (c) costs incurred to send union delegates to the state affiliate's annual convention, and (d) the salaries of the union's employees; 4) the district court erred in dismissing plaintiff's challenge to the union's charges for media communications by its national affiliate; and 5) it erred in holding, sua sponte, that plaintiff will be required to arbitrate future claims against the union before filing suit.

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International Law

[11/03] Applied Med. Dist. Corp. v. Surgical Co. BV
In an appeal from the district court's denial of an injunction barring defendant from pursuing an action against plaintiff in Belgium, the order is reversed where: 1) the district court applied the wrong legal standard by requiring that the claims in the domestic and foreign action be identical, instead of engaging in the required functional inquiry concerning dispositiveness; and 2) the district court relied on the clearly erroneous factual determination that defendant's Belgian claims, other than goodwill indemnities, were available apart from termination.

[10/28] Sunstar, Inc. v. Alberto-Culver Co.
In a trademark infringement case involving interpretation of a trademark licensing agreement of defendant's "VO5" trademark and Japanese trademark law, district court's judgment in favor of the defendant, and orders enjoining plaintiff from using the variant mark and terminating the licensing agreement to return all the licensed trademarks to the defendant is vacated and remanded as under Japanese trademark law, the term senyoshiyoken, which the district judge refused to give the meaning of to the jury, means exclusive-use right where the license holder not only has an exclusive right to use the licensed trademarks within the geographical scope of the licensed trademarks but can sue infringers of the trademarks in its own name.

[10/16] Jamieson v. Comm'r of Internal Rev. Serv.
In an appeal from the Tax Court's determination that the taxpayers owed alternative minimum tax (AMT), the order is affirmed where the Technical and Miscellaneous Revenue Act of 1988 made it crystal clear that Congress intended the 90% cap on the AMT foreign tax credit to supercede any preexisting treaty obligation with which it conflicted.

[10/16] Shipping Corp. of India Ltd. v. Jaldhi Overseas Pte Ltd.
In defendant's appeal from the district court's order vacating portions of an order of maritime attachment and garnishment, the order is affirmed in part where electronic fund transfers (EFTs) being processed by an intermediary bank are not property subject to attachment under Rule B of the Supplemental Rules for Admiralty or Maritime Claims and Asset Forfeiture Actions. However, the court of appeals remands the cause for further proceedings with respect to the remaining portions of the attachment order affecting EFTs of which defendant was the originator.

[10/15] Aurelius Capital Ptnrs., LP v. Argentina
In defendant Republic of Argentina's appeal from the district court's orders of attachment and execution entered in late 2008 over Argentine social security funds, the order is reversed where: 1) nonparty Argentine social security administration was clearly affected by the order and thus had standing to appeal; and 2) the funds were not subject to attachment because they were not being used for a commercial activity in the United States as of the effective date of the Argentine legislation transferring the funds to the control of the administration.

[10/08] Pierre-Louis v. NewVac Corp.
In a wrongful death action brought by survivors of passengers killed in a plane crash, dismissal of the action on forum non conveniens grounds in favor of litigation in Martinique is affirmed where: 1) the Convention for the Unification of Certain Rules for International Carriage by Air did not bar dismissal on forum non conveniens grounds because there was no ambiguity or limitation in the express language of Article 33(4) of the Convention, which stated in no uncertain terms that questions of procedure ?- which could only reasonably be read to include all questions of procedure -- are governed by the rules of the forum state; and 2) with respect to the availability of evidence and witnesses, the analysis strongly favored Martinique, the residence of all the plaintiffs.

[10/08] Telenor Mobile Comms. AS v. Storm LLC
In an appeal from the district court's order confirming a final arbitral award in favor of petitioner and denying respondent's cross-motion to vacate, the order is affirmed where: 1) the arbitration panel did not manifestly disregard the law either by failing to give preclusive effect to Ukrainian court judgments that the parties' dispute was not arbitrable because respondent's agent lacked authority to execute the agreement giving rise to the dispute, or by failing to require a trial to determine the agreement's arbitrability; and 2) the agreement was arbitrable as a matter of law because the respondent's agent had the apparent authority to execute it.

[10/06] Snider v. Lee
In plaintiff's Bivens action against an FBI agent and others arising from her extradition to South Korea for the murder of a fellow exchange student which resulted in an acquittal, district court's denial of qualified immunity for defendant on a Fourth Amendment claim for malicious prosecution is reversed and remanded as the FBI agent is entitled to qualified immunity where plaintiff has not alleged a violation of her constitutional right to be free from malicious prosecution in the United States.

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International Trade

[11/03] Applied Med. Dist. Corp. v. Surgical Co. BV
In an appeal from the district court's denial of an injunction barring defendant from pursuing an action against plaintiff in Belgium, the order is reversed where: 1) the district court applied the wrong legal standard by requiring that the claims in the domestic and foreign action be identical, instead of engaging in the required functional inquiry concerning dispositiveness; and 2) the district court relied on the clearly erroneous factual determination that defendant's Belgian claims, other than goodwill indemnities, were available apart from termination.

[10/23] Aguas Lenders Recovery Grp. LLC v. Suez, S.A.
In an action to recover on a defaulted loan, dismissal of the action on forum non conveniens grounds is reversed where a non-signatory to an agreement may be bound by a forum selection clause and forum non conveniens waiver contained in contracts entered into by an entity alleged to be a predecessor in interest.

[10/16] Shipping Corp. of India Ltd. v. Jaldhi Overseas Pte Ltd.
In defendant's appeal from the district court's order vacating portions of an order of maritime attachment and garnishment, the order is affirmed in part where electronic fund transfers (EFTs) being processed by an intermediary bank are not property subject to attachment under Rule B of the Supplemental Rules for Admiralty or Maritime Claims and Asset Forfeiture Actions. However, the court of appeals remands the cause for further proceedings with respect to the remaining portions of the attachment order affecting EFTs of which defendant was the originator.

[09/28] Qingdao Taifa Group Co., Ltd. v. US
United States Court of International Trade's order enjoining liquidation of entries for importers of hand trucks manufactured and exported by plaintiff-Chinese company during the 2005 to 2006 period is affirmed as the district court did not abuse its discretion in halting the liquidation.

[09/25] Faus Group Inc., v. US
Judgment of the United States Court of International Trade sustaining the United States Customs Service's classification of laminated flooring panels imported by plaintiff as fiberboard under heading 4411 of the Harmonized Tariff Schedules of the United States (HTSUS), subjecting them to a duty rate of 6% ad valorem, is reversed as the flooring panels should be classified within subheading 4418.90.40, the residual category for builders' joinery where it is subject to a duty of 3.2% ad valorem.

[09/24] PAM, S.P.A. v. US
United States Court of International Trade's (CIT) final judgment concerning pasta imported into the United States by an Italian producer and exporter of pasta, arising from a 1996 Commerce antidumping order, is affirmed as the adverse-facts-available (AFA) 45.49% margin assessed against plaintiff is supported by substantial evidence.

[09/02] Ningbo Dafa Chem. Fiber Co., Ltd. v. US
In a case involving an antidumping investigation of recycled polyester staple fiber (PSF) from China, a United States Court of International Trade's judgment upholding the imposition of antidumping duties on appellant is affirmed as the United States Department of Commerce's Final Determination was supported by substantial evidence and not contrary to law in its methodology and resulting color-specific PET flake valuations.

[08/11] U.S. v. UPS Customhouse Brokerage, Inc.
In a dispute involving misclassifications within customs entry documents, Court of International Trade judgment is affirmed in part and vacated in part where: 1) the court properly held that defendant misclassified certain merchandise under the Harmonized Tariff Schedule of the United States; and 2) the court erred in upholding the Bureau of Customs and Border Protection's determination that UPS did not exercise responsible supervision and control in violation of 19 U.S.C. sec. 1641, as Customs did not consider all of the factors in the statute defining responsible supervision and control.

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Trade Secrets

[11/05] Perlan Therapeutics, Inc. v. Sup. Ct.
In plaintiff's case against the defendant for misappropriation of its trade secrets of an anti-viral protein based therapeutic used as a daily nasal spray for the prevention and treatment of the common cold, plaintiff's petition for a writ of mandate to compel the trial court to accept plaintiff's trade secret identification statement as sufficient and to allow it to commence discovery is denied where: 1) the trial court applied the correct legal standard to plaintiff's trade secret identification statement; and 2) there was a basis in the record to support the court's conclusion that the statement was not reasonably particular under the circumstances presented.

[10/27] Awuah v. Coverall N. Am, Inc.
In a class action lawsuit against defendants brought by their franchisees, defendants' interlocutory appeal seeking review of a discovery-related order by the district court is dismissed for want of a final judgment.

[10/05] Premium Mortgage Corp. v. Equifax, Inc.
In an action for misappropriation of trade secrets against credit reporting agencies engaged in the practice of permitting lenders competing with plaintiff to purchase pre-screened consumer reports containing "trigger leads" compiled by plaintiff, dismissal of the action is affirmed where: 1) the Fair Credit Reporting Act preempted state law claims based on pre-screened reports; and 2) plaintiff failed to identify the legal basis for defendants' alleged duty and obligation to maintain the confidentiality of trigger leads.

[09/21] Southwest Stainless, LP v. Sappington
In an action for breach of a noncompetition agreement restricting defendants' ability to work with competitors, judgment for plaintiff is affirmed in part where the district court properly distinguished in its findings of fact between plaintiff's general lost profits and profits lost on specific orders. However, judgment for plaintiff is reversed in part where certain information used by defendants did not qualify as a trade secret because plaintiff disclosed this information to its customers without reservation.

[08/20] Retirement Group v. Galante
In an action for misappropriation of trade secrets, a preliminary injunction in favor of plaintiff is reversed where the injunction could not rationally be upheld as limited in scope to the only legitimate protection (i.e., enjoining the misappropriation of plaintiff's trade secrets) for which injunctive relief may be issued.

[08/11] Hertz v. Luzenac Group
In a trade secret misappropriation action, partial judgment for plaintiffs and defendants is affirmed in part where plaintiff failed to present adequate claims of tortious interference with contract and prospective business advantage. The ruling is reversed in part, however, where the question of whether defendant's manufacturing process was a trade secret was a question of fact that could not be resolved on the current record.

[07/31] Jasco Tools, Inc. v. Dana Corp.
District court order affirming bankruptcy court's grant of summary judgment for defendant is vacated and remanded where: 1) plaintiff's objections to the procedures leading up to the grant of summary judgment are without merit; 2) the court erred in granting summary judgment as plaintiff should have been allowed to complete discovery of defendant; and 3) there were genuine issues of material fact regarding plaintiff's claim of an alleged conspiracy to misappropriate its trade secrets.

[07/30] Proudfoot Consulting Co. v. Gordon
In an action for breach of a covenant not to compete, an injunction against defendant is affirmed where defendant failed to show that the district court clearly erred in finding that defendant's confidential information constituted a legitimate business interest that justified the non-compete covenant. However, the damages award in favor of plaintiff is reversed where plaintiff failed to establish that defendant's solicitation of a client for plaintiff's competitor resulted in plaintiff's loss of the project that was the basis of the damages award.

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Trademark

[11/06] In re 1800Mattress.com IP., LLC
Final decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) refusing registration of the mark "Mattress.com" is affirmed as the Board's decision finding the mark generic in relation to the recited services was supported by substantial evidence.

[11/05] Cold War Museum, Inc. v. Cold War Air Museum, Inc.
In trademark cancellation proceedings, the Trademark Trial and Appeal Board's (Board) decision canceling registration of appellant-Cold War Museum's service mark THE COLD WAR MUSEUM, finding that it had not proven acquired distinctiveness of the mark, is reversed where: 1) the Board erred in deciding that it could not consider evidence of acquired distinctiveness because appellant did not resubmit the evidence in the cancellation, as the unambiguous language of 37 C.F.R. section 2.122(b) provides that the entire file of the registration at issue is automatically part of the record, without any action necessary by the parties; and 2) the Board erred as a matter of law in concluding that appellee had established a prima facie case that the mark had not acquired distinctiveness as appellee failed to present any evidence whatsoever relating to the distinctiveness of the mark and failed even to argue that the mark had not acquired distinctiveness in its petition for cancellation.

[10/28] Sunstar, Inc. v. Alberto-Culver Co.
In a trademark infringement case involving interpretation of a trademark licensing agreement of defendant's "VO5" trademark and Japanese trademark law, district court's judgment in favor of the defendant, and orders enjoining plaintiff from using the variant mark and terminating the licensing agreement to return all the licensed trademarks to the defendant is vacated and remanded as under Japanese trademark law, the term senyoshiyoken, which the district judge refused to give the meaning of to the jury, means exclusive-use right where the license holder not only has an exclusive right to use the licensed trademarks within the geographical scope of the licensed trademarks but can sue infringers of the trademarks in its own name.

[09/16] Art Attacks Ink, LLC v. MGA Ent'mt. Inc.
In a copyright, trademark, and trade dress infringement action, judgment as a matter of law for defendant on copyright and trade dress infringement claims is affirmed where: 1) defendant did not timely move for judgment as a matter of law, but the time limit under Fed. R. Civ. P. 50(b) is not jurisdictional; and 2) plaintiff failed to demonstrate that defendant had access to plaintiff's copyrighted works or that plaintiff's trade dress had acquired secondary meaning.

[09/16] Vita-Mix Corp. v. Basic Holding, Inc.
In a patent and trademark infringement case involving a method of preventing formation of an air pocket around the blades of a consumer blender, summary judgment in favor of defendant is vacated and remanded in part, and affirmed in part where: 1) district court's judgment of no direct infringement is vacated and remanded with instruction to apply the correct claim construction; 2) findings of no invalidity for anticipation, obviousness, or lack of enablement is vacated and remanded with instructions to apply the correct claim construction; 3) district court's judgments of no inducement, no contributory infringement, and no trademark infringement is affirmed; and 4) district court's judgment of no inequitable conduct and no laches is affirmed.

[09/11] Am. Eagle Outfitters v. Lyle & Scott Ltd.
In a contract case arising from parties' efforts to resolve a dispute over the use of similar trademarks in their respective clothing lines, a magistrate judge's rulings are affirmed in part where both parties intended an informal document to be a binding contract and no reasonable jury could decide otherwise, and the terms of such document were sufficiently definite to warrant enforcement. However, the case is remanded as the terms agreed to by the parties with respect to certain clauses were not sufficiently unambiguous to permit judicial interpretation of the contract.

[09/03] Hensley Mfg. Inc. v. ProPride, Inc.
In a trademark infringement action alleging improper use of a trailer hitch designer's name, dismissal of the complaint is affirmed where: 1) the complaint did not allege facts sufficient to show that defendant's use of the name created a likelihood of confusion as to the source of its products; and 2) the fair use defense applied because the use of the name was descriptive.

[08/31] Hilton v. Hallmark Cards
In a trademark infringement and state tort action by Paris Hilton against the greeting card company Hallmark for using her image and catchphrase in a birthday card without her permission, a denial of defendant's motion to strike under California's anti-SLAPP statute is affirmed where: 1) plaintiff had some probability of prevailing on the merits before a trier of fact on the issue of whether defendant's use of her image was transformative; and 2) defendant could not employ the public interest defense because its birthday card did not publish or report information.

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Intellectual Property

[11/06] In re 1800Mattress.com IP., LLC
Final decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) refusing registration of the mark "Mattress.com" is affirmed as the Board's decision finding the mark generic in relation to the recited services was supported by substantial evidence.

[11/05] Perlan Therapeutics, Inc. v. Sup. Ct.
In plaintiff's case against the defendant for misappropriation of its trade secrets of an anti-viral protein based therapeutic used as a daily nasal spray for the prevention and treatment of the common cold, plaintiff's petition for a writ of mandate to compel the trial court to accept plaintiff's trade secret identification statement as sufficient and to allow it to commence discovery is denied where: 1) the trial court applied the correct legal standard to plaintiff's trade secret identification statement; and 2) there was a basis in the record to support the court's conclusion that the statement was not reasonably particular under the circumstances presented.

[11/05] Cold War Museum, Inc. v. Cold War Air Museum, Inc.
In trademark cancellation proceedings, the Trademark Trial and Appeal Board's (Board) decision canceling registration of appellant-Cold War Museum's service mark THE COLD WAR MUSEUM, finding that it had not proven acquired distinctiveness of the mark, is reversed where: 1) the Board erred in deciding that it could not consider evidence of acquired distinctiveness because appellant did not resubmit the evidence in the cancellation, as the unambiguous language of 37 C.F.R. section 2.122(b) provides that the entire file of the registration at issue is automatically part of the record, without any action necessary by the parties; and 2) the Board erred as a matter of law in concluding that appellee had established a prima facie case that the mark had not acquired distinctiveness as appellee failed to present any evidence whatsoever relating to the distinctiveness of the mark and failed even to argue that the mark had not acquired distinctiveness in its petition for cancellation.

[11/05] Schrock v. Learning Curve Int'l, Inc.
In plaintiff's copyright infringement action against defendant who had hired him to take photos of the "Thomas & Friends" toy train characters for use in promotions, district court's dismissal of his complaint is reversed where: 1) the photos qualify for the limited derivative-work copyright provided by section 103(b) as plaintiff's artistic and technical choices combine to create a two-dimensional image that is subtly but nonetheless sufficiently his own; and 2) district court erred in concluding that plaintiff needed defendant's permission to copyright the photos, as there is nothing in the Copyright Act requiring the author of a derivative work to obtain permission to copyright his work from the owner of the copyright in the underlying work.

[11/04] Bridgeport Music, Inc. v. UMG Recordings, Inc.
In plaintiff's copyright-infringement case against defendant for infringement of its copyright on George Clinton's song, based on the use of the phrase "Bow wow wow, yippie yo, yippie yea", district court's finding that defendant willfully infringed plaintiff's rights in the song and an award of statutory damages of $88,980 are affirmed where: 1) the jury instructions were not erroneous as a matter of law; and 2) the district court did not abuse its discretion in declining to give the instructions requested by the defendant.

[11/03] Imation Corp. v. Koninklijke Philips Elec. N.V.
In plaintiff's case against defendants arising from a patent license agreement dispute, judgment on the pleadings in favor of defendants is reversed and remanded where: 1) the district court erred in finding that plaintiff's subsidiaries are not licensed under the parties' patent licensing Agreement; and 2) the unambiguous Agreement makes clear that the license grant includes subsidiaries of plaintiff and defendant that meet the Agreement's Subsidiary definition.

[10/29] Schering-Plough Healthcare Prod., Inc.
In plaintiff's Lanham Act suit against defendants involving an oral laxative and over-the-counter versions of the drug manufactured by defendants, dismissal of plaintiff's complaint without prejudice is affirmed as the FDA is conducting a proceeding to determine whether defendants' drugs are misbranded now that there is an over-the-counter version of the drug.

[10/28] Sunstar, Inc. v. Alberto-Culver Co.
In a trademark infringement case involving interpretation of a trademark licensing agreement of defendant's "VO5" trademark and Japanese trademark law, district court's judgment in favor of the defendant, and orders enjoining plaintiff from using the variant mark and terminating the licensing agreement to return all the licensed trademarks to the defendant is vacated and remanded as under Japanese trademark law, the term senyoshiyoken, which the district judge refused to give the meaning of to the jury, means exclusive-use right where the license holder not only has an exclusive right to use the licensed trademarks within the geographical scope of the licensed trademarks but can sue infringers of the trademarks in its own name.

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