|
 |
Ideas on Intellectual Property Law
 |
Cantor Colburn Newsletter June/July 2012
Copy that — or not
Congress can restore copyrights to public domain works
One might think that, once a copyrighted work enters the public domain, it’s unconditionally available for use from there on out. But the U.S. Supreme Court has held that Congress can restore copyright protection to works that had been in the public domain. This article looks at the legal challenge posed by those who had previously enjoyed free access to such works, and why the Court rejected their arguments. A sidebar discusses the majority opinion’s rejection of the dissent’s concerns about “orphan works” — older and more obscure works that have copyright owners who are difficult or impossible to track down.
Golan v. Holder, No. 10-545, Jan. 18, 2012 (Supreme Court)
Federal Circuit clarifies “co-inventor” test
What defines a “co-inventor”? It’s a critical question, since a co-inventor has the right to exploit an invention without the permission of the other inventors, as well as to license or sell that right without permission or sharing the proceeds. This article examines the case of a researcher who developed a synthesis protocol for making a novel genus of chemical compounds. Later, another researcher synthesized a compound using the first researcher’s protocol. When the latter was not named as an inventor, he sued, and the court found in his favor.
Falana v. Kent State University, No. 2011-1198, Jan. 23, 2012 (Fed. Cir.)
Psychic didn’t see trademark loss coming
In 1995, a popular psychic and astrologer entered into a contract for the production and distribution of materials featuring his services. Under the agreement, he granted the company the right to use his name as a trademark. In 2006, a legal dispute arose when he ceased providing services, and the company ceased to pay him. A jury found that he had violated the agreement. After he was later enjoined from using his name as a trademark, he appealed. This article explains why the subtleties of contract language resulted in the rejection of his claim.
Mercado-Salinas v. Bart Enterprises Int’l, Ltd., No. 10–2359, Dec. 20, 2011 (1st Cir)
Too abstract
Court invalidates patent of automated auto loan service
A company held two patents for a computer-aided method for processing credit applications over electronic networks. After it filed an infringement lawsuit against several parties, the defendants moved to dismiss the case, asserting that the computer-aided method wasn’t eligible for a patent. In finding for the defendants, the Federal Circuit made one thing certain: Merely appending the phrase “computer-aided” to a would-be patent won’t cut it.
Dealertrack, Inc. v. Huber, Nos. 2009-1566, -1588, Jan. 20, 2012 (Fed. Cir.)
Bilski et al v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)
|
|
Cantor Colburn Newsletter April / May 2012
When legal distinctions collide
Court explains “tension” between patents and trade secrets
A recent case heard by the U.S. Court of Appeals for the Federal Circuit involved a dispute that illustrated the “tension” between patents and trade secrets. This article discusses the claims made by both parties after the plaintiff alleged that the defendant — a terminated employee who’d set up his own company — had infringed its reissue patent and misappropriated trade secrets. A sidebar notes that — aside from its ruling — the court chastised the plaintiff for reversing a position it had taken during an earlier hearing.
Atlantic Research Marketing Systems, Inc. v. Troy, Nos. 2011-1002, 2011-1003, May 16, 2011 (Fed. Cir.)
Can an SLA constitute copyright misuse?
In 2008, Apple sued a company that had developed a “master image” of Apple software on a non-Apple computer and then shipped its computers with a copy of that master image installed as the operating system. The defendant contended that Apple had misused its copyright by requiring licensees to run their copies only on Apple computers. This article shows why the court sided with Apple.
Apple Inc. v. Psystar Corp, No. 10-15113, Sept. 28, 2011 (9th Cir.)
Ninth Circuit clarifies the ACPA’s reach
The Anticybersquatting Consumer Protection Act (ACPA) prohibits cybersquatters from registering domain names that are identical or confusingly similar to registered marks that are distinctive at the time of registration. But does the term “registration” include re-registration? That was the position of a plaintiff who noted that an alleged cybersquatter had re-registered its domain name after the plaintiff’s similar-sounding service mark had become distinctive. This article discusses the court’s opinion.
GoPets Ltd. v. Hise, Nos. 08-56110, 08-56112, 08-56114, Sept. 22, 2011 (9th Cir.)
Presumed innocent
Federal Circuit addresses permanent injunctions
Since 2006, patentees have been pulling their hair out over whether a victorious patent infringement plaintiff is entitled to a permanent injunction against the infringement. This article discusses a case in which the appeals court eliminated the presumption of irreparable harm in the patentee’s favor, but also made clear that injunctions remain in reach for some patentees.
Robert Bosch LLC v. Pylon Mfg. Corp., 2011-1096, Oct. 13, 2011 (Fed. Cir.)
eBay Inc. v. MercExchange, L.L.C., No. 05-130, May 15, 2006 (Supreme Court)
|
|
Cantor Colburn Newsletter February / March 2012
The America Invents Act
Key components of the patent reform law
When President Obama signed the Leahy-Smith America Invents Act (AIA) last fall, it marked the culmination of a years-long reform process. This article discusses several key components of the law that will significantly affect the patent prosecution and review processes. Specifically, it shows how the AIA shifts the U.S. patent system from a first-to-invent priority scheme to a first-inventor-to-file scheme and implements entirely new procedures for challenges to the validity of an issued patent. A sidebar explains why patent ownership could get more expensive.
Transaction denied
Federal Circuit addresses software patentability
CyberSource Corporation v. Retail Decisions, Inc., No. 2009-1358, Aug. 16, 2011 (Fed. Cir.)
Bilski v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)
Court shelves first-sale doctrine for foreign-made works
John Wiley & Sons, Inc. v. Kirtsaeng, No. 09-4896, Aug. 15, 2011 (2nd Cir.)
Omega S.A. v. Costco Wholesale, Nos. 07-55368, 07-56206, Sept. 3, 2008 (9th Cir.)
Using survey results in false advertising claims
Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., No. 10-2354, Aug. 4, 2011 (3rd Cir.)
|
|
Cantor Colburn Newsletter Year End 2011
Turning a blind eye backfires
Supreme Court addresses induced patent infringement
Bilski et al v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)
Standard raised for “inequitable conduct” defense
during patent prosecution. This article examines the court’s ruling.
Therasense, Inc. v. Becton, Dickinson and Co., Nos. 2008-1511, -1512, -1513, -1514, -1595, May 25, 2011 (Fed. Cir.)
When trademark and patent injunction standards collide
Voice of the Arab World, Inc. v. MDTV Medical News Now, No. 10-1396, June 8, 2011 (1st Cir.)
eBay Inc. v. MercExchange, L.L.C., No. 05-130, May 15, 2006 (Supreme Court)
Amoco Production Company v. Village of Gambell, No. 85-1239, March 24, 1987 (Supreme Court)
|
|
Cantor Colburn Newsletter October / November 2011
You invent it, you own it
Supreme Court addresses federally funded inventions
Bd. of Trustees v. Roche Molecular Sys., Inc., No. 09-1159, June 6, 2011 (Supreme Court)
Are you hiding something?
Failure to share key information could invalidate a patent
Wellman, Inc. v. Eastman Chemical Co., No. 2010-1249, April 29, 2011 (Fed Cir.)
DuPont factors weigh heavily in banking dispute
Citigroup Inc. v. Capital City Bank Group, Inc., No. 2010-1369, March 28, 2011 (Fed. Cir.)
Playing the Internet domain name game
Newport News Holdings Corp. v. Virtual City Vision, No. 09-1947, April 18, 2011 (4th Cir.)
|
|
Cantor Colburn Newsletter August / September 2011
Better get used to it
Court addresses patent infringement of an information system
Levi Strauss v. Abercrombie & Fitch, No. 09-16322, Feb. 8, 2011 (9th Cir.), Thane International, Inc. v. Trek Bicycle Corp., Nos. 00-55293, 00-55599, Sept. 6, 2002 (9th Cir.)
Getting particular with false marking claims
In re BP Lubricants USA Inc., Misc. Docket No. 960, March 15, 2011 (Fed. Cir.)
You call that art?
Flower display doesn’t make the cut for copyright protection
Kelley v. Chicago Park District, Nos. 08-3701, 08-3712, Feb. 15, 2011 (7th Cir.)
|
|
Cantor Colburn Newsletter June / July 2011
Losing control
Ninth Circuit examines distribution’s role in copyright case
UMG Recordings, Inc. v. Augusto, No. 08-55998, Jan. 4, 2011 (9th Cir.)
Eek! “Naked licensing” leads to lost trademarks
Freecycle Sunnyvale v. The Freecycle Network, No. 08-16382, Nov. 24, 2010 (9th Cir.)
Facts > rules
Federal Circuit rejects familiar formula for patent damages
Uniloc USA Inc. v. Microsoft Corp., 2010-1035, Jan. 4, 2011 (Fed. Cir.)
Can a patentee establish liability for joint infringement?
Akamai Technologies, Inc. v. Limelight Networks, Inc., 09-1372, Dec. 20, 2010 (Fed Cir.)
|
|
Cantor Colburn Newsletter April/May 2011
Do online music providers need a license?
The Second Circuit logs on and weighs in
U.S. v. ASCAP, 09-0539-cv (L), Sept. 28, 2010 (2nd Cir.)
A view to a trademark
Gun manufacturer turns to 007 for help
In re Carl Walther GmbH, No. 77096523, Oct. 26, 2010 (T.T.A.B.)
Generic drug draws preliminary injunction
AstraZeneca LP v. Apotex, Inc., Nos. 2009-1381, 2009-1424, Nov. 1, 2010 (Fed. Cir.)
Conception vs. copying: A patent case
Solvay S.A. v. Honeywell Int’l, Inc., 2009-1161, Oct. 13, 2010 (Fed. Cir.)
|
|
Cantor Colburn Newsletter February/March 2011
Any given Sunday
Fourth Circuit makes the call on fair use
Bouchat v. Baltimore Ravens Limited Partnership, No. 08-2381, Sept. 2, 2010 (4th Cir.)
Patentability after Bilski
USPTO issues interim guidance on process claims
Stauffer v. Brooks Bros., Inc., Nos. 2009-1428, 2009-1430, 2009-1453, August 31, 2010 (Fed. Cir.)
When patent > trademark
Jay Franco & Sons, Inc. v. Franek, No. 09-2155, August 11, 2010 (7th Cir.)
|
|
|
|