Going once, going twice … sold!
Court addresses eBay’s liability for contributory infringement

The popularity of Internet auction services such as eBay has proven to be a boon for sellers of counterfeit goods. In frustration, some trademark owners have fought back by going after not only the sellers for direct infringement, but also the service providers for contributory infringement. In one recent case, the U.S. Second Circuit Court of Appeals looked at eBay’s “generalized knowledge” of counterfeiting on its site and considered whether it should impose liability for contributory infringement. A sidebar discusses how, even though the court found for eBay, it remanded the plaintiff’s false advertising claim for further consideration. Tiffany Inc. v. eBay, Inc., Case No. 08-3947, Apr. 1, 2010 (2d Cir.) Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 1982

Innocence lost
Fifth circuit hears defense in music downloading case

When it comes to copyright notices involving recorded music, can ignorance of the law be a defense? It’s an increasingly important question in today’s age of digital file sharing via the Internet. The U.S. Fifth Circuit Court of Appeals provided one answer in the case of a woman who used a file-sharing program to share 544 digital audio files — including a number of the plaintiffs’ copyrighted recordings — with other users of a peer-to-peer network. Maverick Recording Co. v. Harper, No. 08-51194, Feb. 25, 2010 (5th Cir.)

Federal Circuit confirms: Patents need written descriptions

Some inventors might think any old written description of their
inventions is adequate for patent protection — but they’d be wrong. In fact, in one recent case, the Federal Circuit confirmed that a patent must satisfy a specific written description requirement to be valid. Simply describing the manner and process of making and using the invention won’t suffice.  Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 2008-1248, March 22, 2010 (Fed. Cir.)

Looks are everything when it comes to design patents

In the world of design patents, looks trump all. That’s because a design patent protects only an article’s ornamental aspects — not its functional aspects. In one case involving carpentry tools, the Federal Circuit offered a reminder that this limited scope of protection can undermine a patent owner’s infringement claims against even extremely similar products.  Richardson v. Stanley Works, Inc., 2008-1596, Feb. 24, 2010 (Fed. Cir.)

Is something afoot?
“Ordinary observer” test used to determine design patent anticipation
Design patents can be invalid if the designs aren’t original. But when is a design “anticipated”? When a patent holder sued a retailer for selling an allegedly infringing product, the retailer successfully claimed that the designs were anticipated by a third party’s similar products. On appeal, the patent holder contended that the court had erred by basing its determination only on the ordinary observer test and failing to apply the point of novelty test. But the Federal Circuit concluded that the former must logically be the sole test for anticipation as well as infringement. However, as a sidebar to this article explains, the court did find fault with the district court’s application of the ordinary observer test. International Seaway Trading Corp. v. Walgreens Corp., 2009-1237, Dec. 17, 2009 (Fed Cir.)  Egyptian Goddess, Inc. v. Swisa, Inc., 2006-1562, Sept. 22, 2008 (Fed Cir.)

A game of confusion
Court addresses “likelihood” vs. “absence of actual”
Trademark disputes typically turn on whether a likelihood of confusion exists between two marks — but, in a case involving the use of two universities’ similar logos, an appeals court held that a lack of evidence of actual confusion isn’t necessarily the final word on the likelihood-of-confusion issue. The court looked at three factors relevant to whether a likelihood of confusion exists: 1) the similarity of trade channels, 2) the care consumers employ when purchasing the goods, and 3) the absence of evidence of actual confusion.
University of South Carolina v. University of Southern California, 2009-1064, Jan. 19, 2010 (Fed Cir.)

Coffee break: Court lowers bar for dilution claims
When Starbucks sued a company selling “Charbucks” coffee, a district court found that the two marks had not been blurred, largely because the marks weren’t substantially similar. But an appeals court maintained that the degree of similarity between the marks was just one of six nonexclusive factors that should be considered when evaluating blurring claims.
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765, 766, 2007 (2d Cir.)

Federal Circuit clarifies penalty for false patent marking
Claiming a product is patented to help boost sales may seem like a relatively foolproof idea. But when one company sued another for selling an infringing product, the defendant successfully counterclaimed, alleging false marking because the plaintiff’s product lacked a patented element. Patent holders would be wise to avoid such “marking trolls” by reviewing their markings to ensure the patents remain valid and apply to the marked articles.
The Forest Group v. Bon Tool Co., 2009-1044, Dec. 28, 2009 (Fed. Cir.)

Roughed up: Muscle mag ads affect patentability
Muscle magazines rarely enter into discussions of patentability. But a recent case involving a nutritional supplement turned on several advertisements that ran in a body-building periodical. The defendant in this infringement case argued that the plaintiff’s patent was invalid, because the invention was anticipated or rendered obvious by a number of similar supplements advertised in fitness periodicals. The court’s decision means current and prospective patent holders should probably reconsider the implications of advertisements when it comes to their inventions.
Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., No. 2009-1018, 2009 (Fed. Cir.)

Reality check
Court defines distinctiveness standard for marks
After a self-proclaimed “Internet Entrepreneur” registered a variety of domain names with “veri,” he claimed he was considering entering the transaction verification business — but he never did. When he refused an offer by Vericheck, a provider of electronic transaction processing services, to buy one of his domain names, they filed a complaint. The subsequent ruling outlined the legal standard for distinctiveness and made an important ruling regarding the registration of “highly similar marks” by third parties. A sidebar to this article discusses the finding that the defendant had acted with “a bad faith intent to profit” from the use of the Vericheck mark.
Lahoti v. Vericheck, Inc., No. 08-35001, 2009 (9th Cir.)

University learns harsh lesson about assignment agreements
A university that has assignment agreements with its faculty likely expects to own the patents on inventions they produce. Yet, depending on the language in the agreement, that institution of higher learning could be in for a harsh lesson. Does the phrase “agree to assign” in a copyright and patent agreement reflect an immediate transfer of expectant interests — or a promise to assign rights in the future? The U.S. Court of Appeals for the Federal Circuit weighed in.
Bd. of Trustees v. Roche Molecular Sys., Inc., No. 2008-1509, 2009 (Fed. Cir.)

What makes derivative works copyrightable?
Derivative works: Their very name suggests they’re somehow inferior. When it comes to copyrights, however, some derivative works are entitled to much of the same protection as original works. After a photographer’s relationship with a toy company ended but the company continued to use his photos of toys, he registered the photos for copyright protection, and sued for infringement. An appeals court explained why he had a good case.
Schrock v. Learning Curve, Inc., No. 09-1296, 2009 (7th Cir.); Gracen v. Bradford Exchange, 698 F.2d 300, 1983 (7th Cir.)