Court Decisions | IP Law Watch

Henley Arch obtains significant damages award in copyright claim against home owner

Apr 06 2020

Late last year, Judge Baird of the Australian Federal Circuit Court handed down a decision in the case of Henley Arch v Del Monaco, a copyright infringement matter in respect of a project home design.

The claim was brought by well-known Australian builder Henley Arch, who readers might also recall from the 2016 decision in Henley Arch v Lucky Homes. The respondent in this case, Dorian Del Monaco, was an individual who owned a property in Pakenham (Melbourne), Victoria.

U.S. Supreme Court Holds Copyright Remedy Classification Act of 1990 Does Not Abrogate State Sovereign Immunity for Copyright Infringement: Allen v. Cooper

Mar 25 2020

On March 23, 2020, the Supreme Court of the United States held that the Copyright Remedy Clarification Act of 1990 (“CRCA”) does not abrogate the states’ sovereign immunity from copyright infringement suits.[1] The practical effect of this ruling is that copyright holders cannot sue the states for damages for copyright infringement.[2]

Allen was decided in reliance on and accordance with Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, a 1999 case in which the Supreme Court found unconstitutional the Patent Remedy Act (“PRA”), a related statute “basically identical” to the CRCA, that eliminated the states’ sovereign immunity from patent infringement suits.[3]

Applying the reasoning of Florida Prepaid and emphasizing stare decisis, the Supreme Court rejected the arguments that either Article I’s Intellectual Property Clause or Section 5 of the Fourteenth Amendment’s limitations on state power provide a basis for the CRCA’s abrogation of state sovereign immunity in copyright suits.[4]

U.S. Court of Appeals Affirms Copyright Sublicenses Can Be Implied by Conduct: Photographic Illustrators Corp. v. Orgill, Inc

Mar 18 2020

On March 13, 2020, the United States Court of Appeals for the First Circuit held in Photographic Illustrators Corp. v. Orgill, Inc. that a copyright licensee given the unrestricted right to grant sublicenses may do so without using express language.[1] Specifically, the court held that a sublicense may be implied by the conduct of the sublicensor and the sublicensee.[2] Orgill presents the first ruling by a circuit court on whether copyright sublicenses can be implied in the absence of express permission from a sublicensor.[3] Read More

Misappropriators Beware: Motorola Court Embraces Extraterritorial Application of the Defend Trade Secrets Act

Mar 10 2020

On March 5, 2020, the U.S. District Court for the Northern District of Illinois entered a final judgment on a jury verdict of approximately $764.6 million in a high profile trade secret misappropriation case — Motorola Solutions, Inc. v. Hytera Communications Corp. Ltd.[1] This judgment was made possible, in large part, by an earlier order from the district court holding that the Defend Trade Secrets Act (“DTSA”) applies to misappropriation that occurs outside the United States if (1) the misappropriator is a U.S. citizen or entity, or (2) “an act in furtherance of” the misappropriation occurred domestically.[2] While Motorola is not the first case to recognize that the DTSA provides a private right of action for foreign misappropriation,^[3] it appears to be the first substantive analysis of extraterritorial application of the DTSA to date.^[4]

Case Background

The Motorola case centered on allegations that Hytera, a Chinese rival of Motorola, misappropriated Motorola’s trade secrets to develop and sell a competing digital radio.[5] Motorola claimed that Hytera hired three engineers away from Motorola’s Malaysian office, and that those engineers stole thousands of technical, confidential Motorola documents containing trade secrets and source code.[6] According to Motorola, Hytera used Motorola’s trade secrets to develop a state-of-the-art digital radio that was functionally indistinguishable from Motorola’s digital radios.[7] Hytera proceeded to sell its newly developed radios both internationally and in the United States.[8] While the key actions that enabled Hytera’s acquisition of Motorola’s trade secrets took place overseas, certain actions related to the misappropriation occurred in the United States.[9] In particular, Hytera advertised, promoted, and marketed products embodying the allegedly stolen trade secrets at numerous domestic trade shows.[10]

Cofemel’s first UK outing – The wooly world of copyright and designs

Feb 03 2020

In Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC), the Intellectual Property Enterprise Court (“IPEC”) has issued the first UK decision made since the Court of Justice of the European Union’s controversial decision in Cofemel (C-683/17).

Why does this matter?
The Cofemel decision indicated that there is a harmonised concept of what constitutes a ‘work’ under copyright law throughout the EU, which is not restricted by any defined categories and should not take into account any aesthetic considerations.

Accordingly, there has been much discussion about the UK’s closed list of copyright protectable subject matter under the Copyright, Designs and Patent Act 1988 (“1988 Act”) and the concepts of ‘artistic works’, ‘sculptures’ and ‘works of artistic craftsmanship’ under section 4 of the 1988 Act and whether these are incompatible with EU law. Previous prominent Court decisions such as the Lucasfilm decision in the Stormtrooper Helmet case have also been thrown into question.

This decision is the first time that a UK Court has had to deal with this apparent incompatibility.

We have a decision in the Sky v SkyKick case… and the long-awaited CJEU’s decision is good news for brand owners!

Jan 29 2020

On 29 January 2020 the Court of Justice of the European Union (CJEU) handed its decision in the referral from the English High Court in the Sky v SkyKick case. We have previously covered this case and its importance for EU and UK trade mark law (including with our summary of the opinion issued by Advocate General Tanchev, which can be seen here).

The CJEU’s ruling provides good news for trade mark owners as it largely maintains the status quo for EU and UK trade mark law, departing from the AG’s Opinion in a number of important ways.

Trademark infringement case update: Lucky Brands Dungarees v Marcel Fashion Group

Jan 13 2020

A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086.

The practical lessons to draw from this dispute are numerous:

the importance of initially clearing marks and implementing a plan to handle potential third party objections
strategic enforcement as to when, and against whom, to enforce trademark rights – and squarely on point with this nearly 20 year battle now before the Supreme Court
careful drafting of what claims are released in the context of future use of the same or similar trademarks.

Ferrero successfully enforces the Tic Tac shape mark in Italy

Nov 26 2019

Many of us had a Tic Tac box in our pockets as kids, no matter the country we grew up in. Ferrero Spa (“Ferrero”), the Italian manufacturer of Tic Tac (and lots of other delicious confectionary products) registered the Tic Tac box as a trade mark in several jurisdictions, including Italy.

After succeeding before the CJEU in the invalidation action against BMB sp. z o.o. earlier this year (click here), in a recent case brought before the Italian courts, Ferrero successfully defended its shape marks, despite the invalidity claim brought by S.r.o. Mocca spol. (“Mocca”), a Czech company selling Bliki-branded mints in an identical container.

To 3D, or not to 3D, that is the question: Another twist in the Rubik’s Cube and its EU trade mark protection

Nov 13 2019

The long running and highly publicised Rubik’s cube case has taken another twist. On 24 October 2019, the EU General Court confirmed the cancellation of the EU trade mark for the 3D shape. The mark was cancelled because its essential characteristics were deemed necessary for its technical function (i.e. the shape’s ability to rotate).

Unconstitutionality of PTAB judges corrected by Federal Circuit decision

Nov 03 2019

In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275. Without wading into the technical merits of the decision, the three judge panel of Judges Moore, Reyna, and Chen, issued a decision that, at first glance, sent tremors through those who practice before the PTAB in AIA-based post-grant review proceedings: finding the appointment of PTAB judges unconstitutional.

Category: Court Decisions