Justia Intellectual Property Opinion Summaries

The Second Circuit affirmed the district court's dismissal of plaintiff's third amended complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), alleging that defendants violated the Copyright Act by copying creative aspects from his unreleased science fiction videogame, including his use of a tardigrade -- a microscopic animal -- traveling in space, in their television series Star Trek: Discovery.Even assuming that actual copying occurred, the court agreed with the district court that plaintiff failed to plausibly allege substantial similarity between protectible elements of his videogame and elements from Discovery. The court explained that, overall, the presence of Ripper the tardigrade in Discovery is minimal, as it only appears in three episodes. Therefore, after extracting the unprotectible elements from plaintiff's videogame -- the scientific facts, general ideas, science fiction themes constituting scènes à faire, and generalized character traits -- the court held that the videogame and Discovery are not substantially similar because the protectible elements are markedly different. View "Anas Osama Ibrahim Abdin v. CBS Broadcasting Inc." on Justia Law

Tiffany filed suit against Costco under the Lanham Act and New York law, alleging that Costco was liable for, inter alia, trademark infringement and counterfeiting in connection with its sale of diamond engagement rings identified by point-of-sale signs containing the word "Tiffany." The district court granted summary judgment for Tiffany and awarded Tiffany Costco's trebled profits along with punitive damages and prejudgment interest, for a total of $21,010,438.35.The Second Circuit vacated, holding that the district court's determination was inappropriate at the summary judgment stage. The court held that Costco has raised a question of material fact as to its liability for trademark infringement and counterfeiting and, relatedly, its entitlement to present its fair use defense to a jury. In this case, Costco argued that it was using the word in a different, widely recognized sense to refer to a particular style of pronged diamond setting not exclusive to rings affiliated with Tiffany. Costco claimed that its use of the term was not likely to confuse consumers—the essence of a claim for infringement—and that even if some degree of confusion was likely, it was entitled under the Lanham Act to the descriptive fair use of an otherwise protected mark. Accordingly, the court remanded for trial. View "Tiffany & Co. v. Costco Wholesale Corp." on Justia Law

MPAY, a Massachusetts corporation that develops and owns payroll-processing software that it licenses to its customers, appealed the district court's denial of its motion for a preliminary injunction against appellees. MPAY claimed that it was entitled to such relief based on its copyright-infringement and trade-secrets-misappropriation claims.The Eighth Circuit affirmed in part and vacated in part, holding that appellees demonstrated that their copying, disclosure, and possession of the source code were authorized by the Software Development and License Agreement that MPAY signed with its business partner. Therefore, MPAY has not shown a likelihood of success on the merits of its copyright infringement or trade-secrets-misappropriation claims, and the district court did not err in so concluding. The court also held that MPAY's assertion, that the district court erroneously concluded MPAY's harms were compensable with money damages and so were not irreparable, lacked merit. Furthermore, the balance of the equities and the public interest do not favor an injunction. The court remanded for further proceedings on the question of whether the contractors wrongfully sublicensed use of the software. View "MPAY Inc. v. Erie Custom Computer Applications, Inc." on Justia Law

Plaintiff filed suit against BuzzFeed for using one of his photographs without crediting him in violation of the Digital Millennium Copyright Act (DCMA). The district court awarded plaintiff statutory damages. BuzzFeed appealed, arguing that it did not know its conduct would lead to future, third-party copyright infringement.The Second Circuit affirmed the district court's award of statutory damages and held that the plain language of the DMCA does not require plaintiff to prove that BuzzFeed knew its actions would lead to future, third-party infringement. In this case, the district court correctly applied the DMCA by finding that Buzzfeed, through its own journalist, distributed the photo knowing that plaintiff's gutter credit had been removed or altered without his permission and distributed the photo with a gutter credit reading "Fisher & Taubenfeld" knowing that doing so would conceal the fact that a BuzzFeed journalist did not have authority to use the photo. View "Mango v. Buzzfeed, Inc." on Justia Law

In these consolidated appeals, appellants challenge the royalty rates and terms established by the Board for the period of January 1, 2018 through December 31, 2022. Appellants challenged numerous aspects of the Board's final determination: the Streaming Services argue that the Board's decision impermissibly applies retroactively; the Streaming Services challenge the Board's rate structure and the specific rates applicable under that structure; the Streaming Services and the Copyright Owners each object to the Board's definition of certain terms; and songwriter George Johnson challenges the Board's acceptance of the Subpart A settlement, as well as its adoption of the final rate structure.The DC Circuit rejected the Streaming Services' retroactivity objection and the challenges brought by the Copyright Owners and George Johnson. However, the court agreed with the Streaming Services that the Board failed to provide adequate notice of the final rate structure, failed to reasonably explain its rejection of the Phonorecords II settlement as a benchmark, and failed to identify under what authority it substantively redefined a term after publishing its initial determination. Accordingly, the court affirmed in part, and vacated and remanded to the Board in part because it failed to give adequate notice or to sufficiently explain critical aspects of its decisionmaking. View "Johnson v. Copyright Royalty Board" on Justia Law

After ATOM filed for bankruptcy, plaintiff and ATOM initiated an adversarial proceeding against Petroleum Analyzer, alleging claims of misappropriation of trade secrets, unfair competition, and civil theft. On the bankruptcy court's recommendation, the district court withdrew the reference to the bankruptcy court and asserted jurisdiction under 28 U.S.C. 1334, and entered partial summary judgment for plaintiff and ATOM. Four years later, the district court held a bench trial and entered judgment in favor of Petroleum Analyzer and later awarded attorneys' fees to Petroleum Analyzer.The Fifth Circuit held that the district court did not clearly err by finding that Petroleum Analyzer did not use plaintiff's trade secrets in Petroleum Analyzer's sulfur-detecting excimer lamp called a MultiTek. Furthermore, the district court did not ignore the "law of the case" doctrine. The court also held that the district court did not err by awarding Petroleum Analyzer attorneys' fees under the Texas Theft Liability Act. The court remanded to allow the district court to make the initial determination and award of appellate attorneys' fees to Petroleum Analyzer. View "ATOM Instrument Corp. v. Petroleum Analyzer Co., LP" on Justia Law

Godo sued TCL, alleging infringement, arguing that the patents-in-suit are essential to the Long-Term Evolution (LTE) standard and that TCL’s accused devices are LTE-compatible. A jury found that TCL was liable for infringement by its sale of LTE standard-compliant devices, including mobile phones and tablets. In post-trial motions, TCL unsuccessfully argued that Godo’s theory of infringement was flawed because the “narrow exception” to proving infringement in the standard way—i.e., by showing that each element in the asserted claim is present in the accused devices—only applies in circumstances where the patent owner asks the court to assess essentiality in the context of construing the claims of the asserted patents.The Federal Circuit affirmed, rejecting TCL’s contention that whether a patent is essential to any standard established by a standard-setting organization is a question of law to be resolved in the context of claim construction. Where, as here, there are material disputes of fact regarding whether asserted claims are in fact essential to all implementations of an industry standard, the question of essentiality must be resolved by the trier of fact in the context of an infringement trial. Substantial evidence supports the jury’s infringement verdict. View "Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Ltd." on Justia Law

The Second Circuit affirmed the district court's dismissal of plaintiff's claims under the Copyright Act and the Digital Millennium Copyright Act (DMCA). Plaintiff alleged claims of copyright infringement and copyright management information (CMI) removal based on an underlying controversy involving defendants' promotion of their own version of a honey harvesting product, which replaced one that plaintiff had invented and that defendants had sold for many years through a website defendants owned.The court held that plaintiff was not entitled to statutory damages or attorneys' fees, because the first allegedly infringing act occurred before the date of the copyright registration and no genuine issue of material fact exists concerning this issue. The court also held that plaintiff failed to establish a CMI removal claim under the DMCA, because "Fischer's" cannot be construed as a CMI with respect to the advertising text at issue because it is simply the name of the product being described. View "Fischer v. Forrest" on Justia Law

The Navy began a program to design and build littoral combat ships (LCS) and issued a request for proposals. During the initial phase of the LCS procurement, FastShip met with and discussed a potential hull design with government contractors subject to non-disclosure and confidentiality agreements. FastShip was not awarded a contract. FastShip filed an unsuccessful administrative claim, alleging patent infringement. The Claims Court found that the FastShip patents were valid and directly infringed by the government. The Federal Circuit affirmed.The Claims Court awarded FastShip attorney’s fees and expenses ($6,178,288.29); 28 U.S.C. 1498(a), which provides for a fee award to smaller entities that have prevailed on infringement claims, unless the government can show that its position was “substantially justified.” The court concluded that the government’s pre-litigation conduct and litigation positions were not “as a whole” substantially justified. It unreasonable for a government contractor to gather information from FastShip but not to include it as part of the team that was awarded the contract and the Navy took an exceedingly long time to act on FastShip’s administrative claim and did not provide sufficient analysis in denying the claim. The court found the government’s litigation positions unreasonable, including its arguments with respect to one document and its reliance on the testimony of its expert to prove obviousness despite his “extraordinary skill.” The Federal Circuit vacated. Reliance on this pre-litigation conduct in the fee analysis was an error. View "FastShip, LLC v. United States" on Justia Law

Bio-Rad’s patents are directed to systems and methods for forming microscopic droplets (plugs) of fluids to perform biochemical reactions. Microfluidic systems—often called “labs-on-a-chip”—allow scientists to conduct microscale chemical and biological reactions. For example, the technology allows scientists to analyze and compare DNA, RNA, and proteins within large numbers of individual cells. This technology has applications in medical diagnostics and high-throughput screening. In an infringement suit, the jury found all three patents valid and willfully infringed and awarded damages of $23,930,716. The court granted Bio-Rad’s motion for a permanent injunction. The Federal Circuit affirmed the judgment of infringement of one patent (which covers all six accused products) and the entire damages award. Prosecution history estoppel does not apply and 10X’s challenges concerning the infringement under the doctrine of equivalents fail. The court reversed the district court’s construction of the asserted claims of two patents, vacated the judgment of infringement of those patents, and remanded for a new trial on the issue of whether 10X’s accused products infringe those patents under the proper claim construction. The court also vacated the injunction with respect to 10X’s Linked-Reads and CNV product lines. View "Bio-Rad Laboratories, Inc. v. 10X Genomics Inc." on Justia Law