Intellectual Property

Plaintiff's use of Andy Warhol's silkscreen prints of defendant's photograph of Prince is not exempt from copyright infringement under the fair use doctrine.  While Andy Warhol transformed the photograph somewhat, the proposed use of his silkscreen as a magazine cover directly competed with defendant's initial use of the photograph for the same purpose.  The direct competition brought the use outside… Read More

Plaintiff had no viable claim against GoDaddy for selling a domain name to a third party purchaser after plaintiff failed to pay GoDaddy the renewal fee for that domain name.  GoDaddy was not liable under the Lanham Act because the purchaser rather than GoDaddy used the domain name in commerce.  Also, GoDaddy was immune from the claim under the Anticybersquatting… Read More

Following remand from the US Supreme Court, this decision holds that Unicolors' copyright registration is valid even though the application was incorrect in failing to comply with the "single unit" requirement because Unicolors did not know its application was inaccurate.  The decision rejects all of defendant's other attacks on the judgment, except for reducing damages by half to remove damages… Read More

A trade dress need not be associated in the public mind with a particular manufacturer or other provider in order to acquire secondary meaning and thus be protectible under the Lanham Act.  It is enough to show that the public thinks the product in that dress comes from a single source, even if the public cannot identify which source that… Read More

The trial court correctly denied defendants' Anti-SLAPP motion to strike plaintiff's claims under the UCL and CLRA based on defendants' allegedly false statements in releases or other statements and advertisements that Michael Jackson was the lead artist on all tracks in a posthumous CD.  Even if the defendants' statements were protected speech under CCP 425.16(e), plaintiff showed a probability of… Read More

Reversing a summary judgment in defendant's favor, this decision holds that defendant cannot claim a fair use defense to plaintiff's suit for infringement of its copyright on photos of an ephemeral lake in the Death Valley desert.  All four fair use factors weighed against defendant.  Defendant used the pictures for a commercial purpose--to profit from its article that included the… Read More

Under Fed. R. Civ. P. 4(k)(2), a plaintiff may establish personal jurisdiction over a foreign defendant by (a) alleging a federal law claim against the defendant, (b) showing that the defendant is not subject to personal jurisdiction in any state, and (c) showing that exercise of jurisdiction over the defendant is consistent with due process, considering the defendant's contacts with… Read More

Petrella v. Metro-Goldwin-Mayer, Inc. (2014) 134 S.Ct. 1962 did not abrogate the rule that the 3-year statute of limitations for copyright infringement in modified by the discovery to allow suit within 3 years of the date when the plaintiff first knew or reasonably should have known of the infringement. Read More

On remand after reversal of an order dismissing the complaint (Sicre De Fontbrune v. Wolfsy (9th Cir. 2016) 838 F.3d 992), this decision reverses a summary judgment in defendant's favor refusing to enforce a French judgment for "astreinte" damages for using photos of Picasso paintings infringing plaintiff's copyright in the photos.  The French judgment that plaintiff sought to enforce was… Read More

The right of a trademark owner to control the distribution of its trademarked product does not extend beyond the first sale of the product, and trademark rights are “exhausted” as to a given item upon the first authorized sale of that item.  This first sale doctrine applies not only to the resale of the product in unmodified form by the… Read More

Under the Madrid Protocol implemented in 15 USC 1141 et seq, and under 15 USC 1057, the holder of a trademark registered in a foreign country can obtain registration of the trademark in the United States as well, and obtain the benefit of a constructive use date pegged to the date of the foreign registration or application for US registration. … Read More

A musician's use of an eight note sequence at a steady rhythm involved only common musical elements and was not copyrightable.  Hence, the district court correctly granted JMOL against the musician's claim that the defendant infringed his copyright by copying the first six of his eight note repeated musical figure in her song. Read More

Under 17 USC 411(b), a certificate of registration of a copyright is effective and satisfies the registration-before-suit requirement of 411(a) even if the certificate contains inaccurate information unless the applicant submitted the information with knowledge it was inaccurate and Register of Copyrights would have refused registration had it known of the inaccuracy.  Reversing the Ninth Circuit (Gold Value Int'l Textile,… Read More

Plaintiff voluntarily dismissed its misappropriation of trade secrets claim, but continued to prosecute six other causes of action against defendant.  Defendant moved unsuccessfully for an attorney fee award under Civ. Code 3426.4 which allows fee awards for trade secrets claims brought in bad faith.  Defendant's appeal from the order denying its fee motion was dismissed.  The order was not a… Read More

The de minimis copying test in a copyright infringement action relates only to the degree of copying, not to the extent of the infringement by minimum use of a copyrighted work.  So, here, defendant could  not raise a de minimis defence since it had completely copied plaintiff's copyrighted photograph of the Indianapolis skyline.  Its copying was total, not de minimis. … Read More

Disney entered into a contract with Gilkyson for him to compose the song "The Bare Necessities."  The contract provided that the song would be a work-for-hire to which Disney would own the copyright.  Disney was to pay Gilkyson $1,000 up front, plus 5 cents for each sheet music copy sold and "50% of the net amount received by our music… Read More

To validly register a trademark with the USPTO, the applicant must file a declaration attesting that the mark is in use in commerce, by which is meant bona fide use of the mark in the ordinary course of trade, and not made merely to reserve a right in a mark.  Use in commerce requires both actual use and display of… Read More

This decision refuses to overrule the assignor estoppel doctrine which prevents the assignor of a patent from challenging the patent's validity if doing so would contradict the assignor's express or implied warranty that the patent was good at the time the assignor sold it.  However, the estoppel does not apply when the assignment is made before a patent application is… Read More

Oracle breached its contract with HP by announcing that its next product releases would not be compatible with HP's Itanium computers.  Following the first phase of trial in this case, the trial court concluded that the parties' contract required Oracle to offer Itanium-compatible versions of its product releases.  Oracle then announced that it would release Itanium-compatible versions, but also announced… Read More

Having agreed to maintain its strategic relationship with HP and support of their shared customer base, by continuing to offer its product suite on HP platforms, Oracle six months later announced that its next product releases would not be available for HP computers.  This decision holds that the announcement was a present breach of the parties' agreement, not an anticipatory… Read More