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SOUTH-WESTERN LEGAL STUDIES IN BUSINESS CASE UPDATES—INTELLECTUAL PROPERTY
SW Legal's Case Updates is a SW Legal Studies service to provide briefs of the latest state and federal court cases. Review the summaries and, for cases of interest, select the case brief. If you cannot find a case of interest, return to Topic Index .
Title
Summary
Plastic Wishbone Meets Copyright Protection Test
Briefed Case
Appeals court held that a plastic wishbone meets the test for copyright of a sculpture because it is an original work, not a duplication of a real wishbone. Since the copyright is valid, the owner had the right to collect damages from an infringer.
(Updated September 2010)
Theme of Screenplay Not Protected by Copyright
Briefed Case
Court dismissed a suit for copyright infringement by an author who contended that the concept for a Disney movie was taken from her screenplay. The court found that while the themes were similar, there were not sufficient similarities.
(Updated September 2010)
Provisional Patent Application Trumps Later Filed Patent Applications
Briefed Case
A provisional patent application was filed before another inventor filed a regular patent application for the same process. The provisional application was finalized after the regular patent application was filed, but the provision application has priority as it recognized the art involved.
(Updated August 2010)
License May Restrict Continued Use of Patented Goods Sold
Briefed Case
Court held that a farmer who planted seeds that he grew from patented seeds that he purchased under a license that stated that there may be no such use, violated the patent. He would be enjoined from such practices in the future in violation of the sale license agreement.
(Updated February 2010)
Descriptive Mark Must Have Be Distinctive to Be Registered and Valid
Briefed Case
Appeals court held that a descriptive mark that had been in use for more than five years and had evidence of distinctiveness was valid when registered. The presumption that it was not valid was not overcome by a challenge to the mark by a party that wished to have the registration removed.
(Updated January 2010)
Tarnishment of Trademark Justifies Injunction and Payment of Attorney Fees
Briefed Case
Court held that for a company to make unauthorized use of a well-known trademark, despite being warned against its use, in an effort to draw attention to company services, was dilution of a mark by tarnishment that justified an injunction against further use and warranted payment of attorney fees by defendant.
(Updated November 2009)
Song Infringement Must Show “Substantial Similarity” for Claim to Proceed
Briefed Case
District court held that a claim of copyright infringement must proceed under federal Copyright Law, not state consumer protection law, and that the holder of a copyrighted song must demonstrate that the claimed infringing song is “substantially similar” to the protected work.
(Updated September 2009)
Geographical Deception in Trademark Means Many Consumers Will Be Deceived
Briefed Case
Appeals court held that the Trademark Office needed to reconsider a trademark it had rejected for being geographically deceptive. For that to be the case, a substantial number of consumers would have to think that the foreign word used as a mark indicated that the product was connected with the foreign location word used for a mark.
(Updated September 2009)
Descriptive Trademark without Secondary Meaning Cannot Be Enforced
Briefed Case
Appeals court held that a trademark that had clear geographic meaning was, at best, a descriptive mark. As such, it receives no protection from infringement. To become enforceable, a descriptive mark must have secondary meaning that goes beyond its original meaning.
(Updated June 2009)
Parody of Song Allows Use without Copyright Violation
Briefed Case
Court dismissed a copyright infringement suit by the owner of a song that was used as the basis for a song on a television program. Since the new song was a parody of the original song, it is a transformation of the song that is protected under the fair use doctrine.
(Updated June 2009)
Test for Design Patent Infringement Simplified to Ordinary Observer Rule
Briefed Case
Federal Circuit abandoned a dual test for infringement of design patents that it had used for 24 years and returned to a one part test. Courts should look to see if an ordinary observer, familiar with the prior art, would see imitation.
(Updated April 2009)
First Amendment Protects Artistic Use of Trademarked Name
Briefed Case
Appeals court held that the artistic use of a club name in a videogame was protected by First Amendment rights and the owner of the trademarked club name could not sue for infringement.
(Updated February 2009)
Television Program Idea Not Subject to Copyright Protection
Briefed Case
The creator of an idea for a television program that a competitor developed had no cause of action for copyright infringement. The general idea of the program is not protected, only the details of actual programs.
(Updated January 2009)
Can’t Go Back on a Promise to Not Sue for Trademark Infringement
Briefed Case
Appeals court held that a party claiming trademark infringement lost because there was evidence that in settlement negotiations from prior litigation, the plaintiff told the defendant the plaintiff would not object to use of a particular trademark. When plaintiff later sued for infringement when the mark was used, the court allowed evidence of the discussions.
(Updated September 2008)
Pricing Trade Secrets Not Forced Out by FOIA Request
Briefed Case
Appeals court upheld the position of a company that bid on a government contract that the detailed information in the bid was a trade secret that could not be exposed to a competitor that filed a Freedom of Information Act request.
(Updated July 2008)
Memorized Client List Is Trade Secret
Briefed Case
Ohio high court held that an employee who used memorized information from his past employment to compete with his former employer in his new employment by contacting clients violated the Uniform Trade Secrets Act.
(Updated July 2008)
Infringement of Mark Requires Showing of Confusion in the Market
Briefed Case
Appeals court held that while a trademark holder had a valid mark, it had no basis for damages against a user of the mark since the mark owner failed to provide evidence of confusion in the market.
(Updated June 2008)
Method Patent Requires Duplication of Every Step of Method to Be Infringement
Briefed Case
Federal circuit held that a system that performed the same process as a process covered by a method patent did not infringe because the steps performed by the non-patented system varied from the steps in the method patent.
(Updated May 2008)
Willful Violation of Lanham Act Allows Treble Damages
Briefed Case
Court ordered that in addition to an injunction against further sales of false origin goods, the seller that violated the Lanham Act would pay the trademark owner treble damages plus attorney fees.
(Updated May 2008)
Congress Has Ability to Cancel Trademarks
Briefed Case
Appeals court held that when a clause was put in an appropriation bill for the Patent and Trademark Office that said for it to kill a specific trademark, the Office had the ability to cancel the mark immediately.
(Updated April 2008)
Parody of Famous Mark Allowed
Briefed Case
Appeals court held that the maker of a dog chew toy that was a parody of expensive handbags make by Louis Vuitton did not infringe or dilute the original mark. Such parody is fair use.
(Updated April 2008)
Cases Involving Patent Validity Issues Must Be in Federal Court
Briefed Case
Appeals court held that a suit that involved patent validity and patent infringement must be in federal court. There were other issues involved, but the patent issued required jurisdiction to be federal.
(Updated March 2008)
Copyright Must Be Registered Before Infringement Takes Place or No Damages
Briefed Case
Appeals court held that under the Copyright Act, copyrighted material must be registered for there to be a claim for damages. If infringement begins before the copyright is registered, while the copyright may be valid, there are no damages for the infringement.
(Updated March 2008)
No Infringement of Trademark Despite Identical Names
Briefed Case
Court dismissed a suit brought by an online magazine called SLY that claimed a print magazine also called SLY infringed on its mark. The court held that there was no trademark violation as the marks were weak, and the products were in distinct markets.
(Updated February 2008)
False Ads That Inflict Harm on a Competitor May Be Blocked
Briefed Case
Appeals court held that a cable television service provider could get a court injunction against the airing of commercials that contained false comparisons of its picture quality compared to a satellite provider. Because the claims made were false and named the competitor, injury was inflicted.
(Updated January 2008)
Reapplication of Copyright to Material Previously in Public Domain Provides Protection
Briefed Case
Appeals court held that due to a change in federal law that restored certain copyrights that had previously been removed, other parties had to cease producing the material that was now protected by copyright, even if it had not been protected previously.
(Updated November 2007)
Registration of Mark Cancelled in Favor of Party Who Used Mark in Commerce
Briefed Case
Appeals court held that a firm that registered a trademark, but did not use it until after another party used the mark in commerce, loses the mark in favor of the party who used it in commerce.
(Updated October 2007)
Publisher of Magazine Has Right to Reproduce Old Issues Electronically
Briefed Case
Appeals court held that the publisher of a magazine was privileged to reproduce the magazine in a digitized format that faithfully reproduced previous issues. This reproduction did not violate the copyrights of photographers who contributed photos to the original magazine.
(Updated September 2007)
Patent Invalid If Innovation Was Obvious Use of Existing Art
Briefed Case
Supreme Court held a patent invalid for obviousness. The patent combined several existing elements into a new combination to solve a particular problem. This was obvious to a person of ordinary skill in the art involved.
(Updated August 2007)
Patent Not Infringed When Foreign Producer Adds Components Out of the U.S.
Briefed Case
Supreme Court held that Microsoft did not infringe an AT&T patent when foreign makers of computers added the AT&T patented component to Windows operating systems provided by Microsoft.
(Updated August 2007)
Patent Licensee May Sue for Declaration of Patent Invalidity
Briefed Case
Supreme Court held that when one party had agreed to license a patent from another party, it had the right, without terminating the license, to sue to have a declaration of the invalidity of the patent.
(Updated August 2007)
Common Terms in Domain Name Are Generic for Trademark Purposes
Briefed Case
Appeals court held that the owner of the website www.lawyers.com could not trademark lawyers.com as a service mark because that term was in common use and referred to many providers of assorted legal services.
(Updated May 2007)
Descriptive Marks Due Little Protection
Briefed Case
Appeals court held that a registered descriptive trademark for a product not well known could not sue another company with a similar mark for infringement. The products were not identical and, given the size of the mark holder, there was little likelihood of confusion.
(Updated May 2007)
Copying General Theme of Copyrighted Work Is Not Infringement
Briefed Case
Appeals court affirmed that there was no infringement when one film company developed a story similar to that contained in a script the company had a chance to review but did not use. Infringement requires copying of specific parts of material, not general themes and story lines.
(Updated January 2007)
Copying Computer Program on Workstations Linked Together Is Infringement
Briefed Case
Appeals court held that for a commercial user of a copyrighted program to make many copies of a licensed program for workstations linked together constituted infringement as it damaged the market for the program.
(Updated January 2007)
Injunctions against Use of Infringed Patent Must Meet Strict Test
Briefed Case
Supreme Court held that when patent infringement has been held to exist, and when an injunction against further infringement is requested instead of money damages, the patent holder must satisfy a four-factor test to justify the injunction.
(Updated December 2006)
Patent Infringer to Pay Damages for Further Infringement, Injunction Denied
Briefed Case
Court held that a patent infringer would pay monetary damages for past and future infringement but that an injunction against future infringement would not be imposed because of the harm to the public, which would lose the use of the good containing the infringement.
(Updated July 2006)
Generic Portion of Service Mark Not Protectable
Briefed Case
Appeals court held that "Bob the Beerman" at Colorado Rockies baseball games could not protect "beerman" from use by Coors brewing. The term is generic and Coors' use of the term would not be confused with the person people at Rockies' games may have seen.
(Updated June 2005)
Bad Behavior by Parties to Trademark Dispute Leads Court to Refuse to Enforce Rights
Briefed Case
Former business partners fought with each other over many issues, including a trademark. The court held that because both behaved badly, it would invoke the unclean hands doctrine and not enforce the trademark rights held by one party.
(Updated April 2005)
General Movie Theme Not Sufficient To Establish Copyright Infringement
Briefed Case
Appeals court held that absent proof that a movie producer had read a script somewhat similar to a later script used in making a movie, and given major differences in the structure of the movie, there was not adequate evidence to support a suit for copyright infringement.
(Updated March 2005)
Confusion Over Trademark Among Non-Buyers May Be Evidence of Infringement
Briefed Case
Appeals court held that a trial over a claim of infringement on a trademark could proceed. While the original mark holder could not show lost sales, if it could show confusion among prospective customers, it may have a claim under the Lanham Act.
(Updated November 2004)
Copyright Must Be Registered for Court to Have Jurisdiction in Infringement Suits
Briefed Case
Appeals court affirmed that under the Copyright Act an infringement claim could be made only if the copyright has been registered. A copyright on an original product does not extend protection to derivative works; they must also be registered before an infringement suit may proceed.
(Updated February 2004)
Swimming Program May Be Protected Trade Secret
Briefed Case
A group of swim instructors left their employer who had developed a special swim program for infants. The former employees went into direct competition. An appeals court held it was to be determined at trial if the program was due trade secret protection.
(Updated January 2004)
Misappropriation-of-Name Tort Not Same as Right-of-Publicity Tort
Briefed Case
Missouri high court held that when the name and likeness of a well-known person is used for commercial purposes, the tort is right-of publicity, which is misuse of name for commercial purposes, not misappropriation-of-name, which involves misuse of name that violates personal dignity.
(Updated October 2003)
Trademark Dilution Requires Proof of Injury
Briefed Case
Supreme Court held that to sustain a claim of trademark dilution under the Federal Trademark Dilution Act, a plaintiff must prove actual dilution by establishing economic injury to the mark, rather than just assert a likelihood of dilution.
(Updated June 2003)
Consultants to Software Users May Not Copy and Resell Software
Briefed Case
Appeals court held that the owner of a proprietary software program had a cause of action for copyright violation and trade secret misappropriation against a consultant who copied the program and incorporated it into its own proprietary program that it sold.
(Updated April 2003)
Breach of Contract No Excuse for Trademark Infringement
Briefed Case
Appeals court held that when a French manufacturer breached its distribution agreement for its trademarked goods in the U.S., the U.S. distributor did not have the right to then obtain counterfeit goods to sell instead. The trademark rights in the U.S. revert to its owner, and the U.S. distributor must cease sales of counterfeit goods.
(Updated March 2003)
Use of Photograph for Commercial Purposes without Payment Is Unjust Enrichment
Briefed Case
Appeals court held that the trial court properly found that on grounds of unjust enrichment, a commercial photographer was due payment of royalties for mass reproduction of a photograph that was used without permission. The damages would be estimated based on industry standard payment rate.
(Updated March 2003)
Claim that Harry Potter Infringed on Preexisting Work Found Fraudulent
Briefed Case
Trial court held that the author of the Harry Potter series of books did not infringe on the copyright or trademark claims of an earlier author who used the term "muggles" that appears in the Potter books. Sanctions were imposed on the earlier author who falsified evidence to support her claim of infringement.
(Updated January 2003)
Marks That Have No Public Recognition Have Little Protection
Briefed Case
Appeals court held that in a contest between two firms over the use of a particular term, the complaining firm failed to show that the other firm had infringed on its use of the term because it had not acquired secondary meaning.
(Updated December 2002)
Public Use of Invention Prior to Patent Filing Means No Patent Available
Briefed Case
Appeals court held that when an inventor showed others how his invention worked, but did not impose an obligation of confidentiality, there was public use of the invention before the patent application was filed, which made patents he later received invalid.
(Updated December 2002)
Assignment of Trademark May Be Perpetual and Not Affected by Later Registration
Briefed Case
Appeals court held that an assignment of a trademark, without compensation, decades before the trademark was registered, was a valid perpetual assignment that may not be revoked by the holder of the registered mark.
(Updated November 2002)
Patent License Agreements Must End When Patent Expires
Briefed Case
Appeals court held that patent license agreements may not be enforced beyond the expiration date of the patent. The Supreme Court has made it clear that to allow royalties to be paid to patent owners beyond the expiration date is an extension of the monopoly privilege granted by patent that will not be allowed.
(Updated September 2002)
Protected Proprietary Process Not Trade Secret if Subject to Reverse Engineering
Briefed Case
Mississippi high court held that while a company did make efforts to protect its bid process on steel fabrication jobs, and the process was valuable to the firm, a person skilled in the field could figure out the bid process, so it was not a trade secret.
(Updated April 2002)
Copying Words, Not Ideas, Needed for Copyright Infringement
Briefed Case
Court refused to issue injunction against the sale of a book alleged to contain infringed copyrighted material. A likelihood of success on the merits must be shown to justify an injunction. That did not occur because only 15 sentences in an entire book were shown to have been copied.
(Updated March 2002)
"Innocent Infringer" Liable for Compensatory Damages
Briefed Case
Appeals court affirmed that compensatory damages may be imposed on an innocent infringer. A telephone company left a business name in a listing when it had been instructed to delete the name. The result was a loss of business to the listing company. The mistake was innocent but not objectively reasonable.
(Updated February 2002)
Goods Sold More Than One Year Prior to Filing of Patent Application May Not Be Patented
Briefed Case
Appeals court affirmed that a patent was invalid, so it could not be infringed, because the invention was sold commercially more than one year before the patent application was filed. In such cases, no patent should be issued.
(Updated October 1, 2001)
Confusion Unlikely Between Marks, So Both Allowed to Stand
Briefed Case
Court denied a request by the owner of the trademark, "Origins," to prohibit the use of "Natural Origins." The first trademark, while strong, is used on cosmetics and looks quite different from the other trademark, which is used on women's clothing. There is no likelihood of consumer confusion.
(Updated October 1, 2001)
Phrase in Copyrighted Song Not Protected Against All Uses of Phrase
Briefed Case
Court dismissed a suit brought by a song writer who copyrighted a song that contains the phrase "Texas Thunder." Because that phrase is not original, the owner of the song copyright cannot prevent others from using the phrase in music or in other market applications.
(Updated October 1, 2001)
Damages for Trade Secret Theft Must Have Some Reasonable Basis
Briefed Case
An Appeals court upheld the award of $4.6 million for trade secret misappropriation as being justified by expert testimony about the cost of development of such information, even if the information was not used by the defendant to generate profits.
(Updated September 1, 2001)
Attorney Fees Allowed for Prevailing Party Under Lanham Act When Suit Not Justified
Briefed Case
Appeals court upheld the award of attorney fees to a defendant who prevailed in a trademark infringement suit brought under the Lanham Act. Because the suit itself was meritless and because the plaintiff engaged in legal acts that drove up the legal expenses of the defendant, the award was proper.
(Updated September 1, 2001)
Reprinting of Copyrighted Articles in Electronic Databases without Permission Is Infringement
Briefed Case
Supreme Court held that periodicals that publish copyrighted articles by various authors do not have the right to republish the articles in other forms, such as electronic databases, without permission of the authors.
(Updated August 1, 2001)
Copyrighted Symbols Placed on Clothing May Have Been Infringed by Similar Designs
Briefed Case
District court refused to dismiss a suit brought by a clothing designer that placed copyrighted symbols on its clothing. Clothing sold by Wal-Mart contained symbols that were sufficiently similar to raise the possibility of infringement, so the case could proceed.
(Updated August 1, 2001)
Use of Patent for Government Contract Is Defense Against Infringement
Briefed Case
One company made use of a patented device produced by another company, which then sued for infringement. The appeals court affirmed that the user of the device had an affirmative defense since the use was strictly for the benefit of the government.
(Updated August 1, 2001)
Jury Could Find That Suggested Team Design Faxed to Team Was Copyrighted and Infringed
Briefed Case
Appeals court upheld the refusal of a trial court to overturn a jury verdict in favor of a fan of the Baltimore Ravens who faxed the team a suggested logo that he copyrighted later, which turned out to be "strikingly similar" to the logo soon adopted by the team.
(Updated May 1, 2001)
Former Member of Steppenwolf Is Who He Says He Is
Briefed Case
Appeals court held that a former member of the band Steppenwolf has the right to identify himself as such. To do so is not trademark infringement. He never contracted away the right to refer truthfully to his past position. There would be no confusion on the part of consumers if the former association were properly stated.
(Updated May 1, 2001)
Expired Patents Rarely Will Product Trade Dress Protection for Product
Briefed Case
The Supreme Court held that a product that had been protected by a patent, now expired, whose patent feature was now being copied by competitors, was not due trade dress protection. The patent protection was for a functional device, not distinctive product packaging or presentation that is ornamental or incidental to the design of the product.
(Updated May 1, 2001)
Failure to Show Confusion Over Marks Means Mark Application Will Stand
Briefed Case
An Appeals court reviewed the factors used to determine if a trademark application will be rejected. The Trademark Board improperly decided that there would be confusion between existing marks and a new mark, but failed to provide evidence of confusion, so the new mark will be allowed.
(Updated February 1, 2001)
Likelihood of Confusion Justifies Cancelling of Trademark to Protect Senior Mark
Briefed Case
Appeals court upheld the decision of the Trademark Trial and Appeal Board to cancel "laserswing," a mark registered years later than the mark "laser." Since both marks apply to golfing items, there is a likelihood of confusion in that market and the senior mark is due protection.
(Updated January 1, 2001)
No Misappropriation of Identity of Minor Movie Figure in Toy Based on Movie
Briefed Case
Appeals court upheld the dismissal of a suit brought by a supporting actor from a movie that spawned a line of small toys. The toy does not look like the character or the actor, and there was no evidence that the persona in question had commercial value that could be misappropriated.
(Updated January 1, 2001)
Repairing Worn Part on Patented Machine Is Not Infringement
Briefed Case
An Appeals court upheld lower court verdict that for a company to do repair work, including part replacement, to a patented item was not infringement. That would happen if the work went beyond repair and involved construction of equivalent items.
(Updated December 1, 2000)
Designs Similar, But Not Close Enough to Constitute Copyright Infringement
Briefed Case
Court dismissed a copyright design infringement claim brought by a diamond seller against a competitor. While the design was copyrighted, the competitor's design was different enough, given the similarity of ring designs in the market, to defeat the claim. The design had no achieved secondary meaning in the market.
(Updated December 1, 2000)
Slim Cigarette Design Too Obvious to Be Patented
Briefed Case
Appeals court upheld trial court decision that a patent held by a cigarette maker for cigarettes with a smaller circumference than standard cigarettes was invalid for obviousness. The design was obvious to one of ordinary skill in the art. Hence, there could be no claim of infringement.
(Updated December 1, 2000)
Product Designs Must Have Secondary Meaning for Trade Dress Protection
Briefed Case
Supreme Court reversed lower courts by holding that Wal-Mart was not liable for infringement for having made knock-off clothing based on designs by a clothing designer. Trade dress is protected if the design has acquired secondary meaning to the consumer.
(Updated June 1, 2000)
"Express" in Trademark Is Descriptive Term Due Little Protection
Briefed Case
Trial court held that there was no likelihood of confusion between the trademarks "Express Services" and "Careers Express" since no confusion among consumers had been shown. Since "express" is a descriptive term, it is due less protection than stronger marks.
(Updated February 1, 2000)
Full Trial Required to Determine Claim of Patent Invalidity
Briefed Case
Appeals court reversed district court granting summary judgment in favor of party accused of infringing a patent. When a defendant claims a patent is invalid, the evidence must be clear and convincing for defendant to be granted summary judgment. That was not the case here, as defendant's evidence did not rise to that level.
(Updated November 1, 1999)
Musician's Right of Publicity Violated by Use of His Name in Advertisement
Briefed Case
Musician Don Henley's name was used in playful manner in a department store ad for a shirt called Don's henley. Trial court granted summary judgment on the fact that such use for commercial purpose appropriated Henley's name, a violation of his right of publicity.
(Updated September 1, 1999)
Patent Invalid for Anticipation Must Have Been Clearly Anticipated in Prior Patent
Briefed Case
Federal Circuit reversed a district court decision invalidating a patent for anticipation because it was not clearly established at trial that previously issued patents had clearly anticipated the later issued patent.
(Updated September 1, 1999)
Individual Citizen Can Challenge Registration of O.J. Simpson's Trademarks
Briefed Case
The Federal Circuit reversed a holding of the Trademark Board that denied the right of a citizen to oppose the registration of O.J. Simpson as a trademark. Immoral and scandalous material may not be registered under the Lanham Act. That standard is decided by public opinion, not the personal views of members of the Board.
(Updated June 1, 1999)
Second Maker of Laminated, Foldable Maps Did Not Infringe on Originator
Briefed Case
Appeals court upheld rejection of a claim of trademark and copyright violation brought against a firm, Streetsmart, which made laminated, foldable maps similar to those of the originator, Streetwise.
(Updated May 1, 1999)
Memorized Customer Lists May be Trade Secrets
Briefed Case
Washington high court held that valuable customer lists, which had been reasonably protected by an employer, were protected under the Uniform Trade Secrets Act. Former employees who memorized the list and used the information in competition with their former employer were liable for damages.
(Updated May 1, 1999)
Harley Is Not the Only Hog
Briefed Case
Appeals court held that Harley-Davidson had improperly appropriated the word hog, in reference to large motorcycles. Hog had been in common public use before Harley claimed the term, so it remains generic.
(Updated April 1, 1999)
No Trade Secret Created Using Delinquent Tax Data
Briefed Case
Appeals court held that no trade secret had been created, and therefore was not misappropriated by a former employee who used the technique of his former employer of paying delinquent taxes and then bidding on property sold at public auction.
(Updated March 1, 1999)
Clock Can Run on Patent Application Even if Invention Not Physically Produced
Briefed Case
Supreme Court held that the one year on-sale period for a patent runs from when the invention is offered for sale and could be reduced to practice by one skilled in the art, not from which when the invention is actually reduced to physical production.
(Updated January 1, 1999)
Idea Expressed on T-Shirt Not Protected by Copyright
Briefed Case
Appeals court upheld dismissal of infringement claim and award of attorney fees to defendant whose souvenir t-shirts imitated the sentiment of copyrighted t-shirts but did not copy the original design.
(Updated January 1, 1999)
Known Components Can Constitute Trade Secret
Briefed Case
Georgia high court upheld injunction against competitor that hired employee who had been in charge of development of complicated company logistics system that saved substantial sums. Trade secret protection extends to known facts combined in original ways that give competitive advantage.
(Updated 10-19-98)
Brief Use of Copyrighted Photos in Movie is De Minimis
Briefed Case
Use of copyrighted photographs in background of movie set for brief period is fair use because the appearance was brief, the photos were not easily identifiable, and largely out of focus.
(Updated 10-5-98)
Rents from Rent All Accrue to Author
Briefed Case
Professional writer hired to improve Broadway play's script did not obtain co-authorship and, thereby, did not obtain copyright interests in play, which remained with original author.
(Updated 10-5-98)
Stepping on Blue Suede Shoes Is Infringement
Briefed Case
Nightclub called "The Velvet Elvis" that used Elvis Presley theme violated trademark and service mark rights of owner of Presley trademarks and publicity rights. Parody is not a defense against infringement.
(Updated 10-5-98)
Rock and Roll Museum May Not Be Trademark Heaven
Briefed Case
Photographer's commercial exploitation of a photo of the Rock and Roll Hall of Fame, with that name attached, may not violate the trademarks attached to the name or the likeness of the building. Use of building likeness by trademark holder was inconsistent and name use may be fair use.
(Updated 4-6-98)
Copyrighted Gray Market Goods May Not Be Stopped By Copyright Owner
Briefed Case
Reimporter of copyrighted product sold for less in foreign than domestic markets undersold producer in domestic market who controlled distribution within the country. Under first sale doctrine, Supreme Court held that there was no infringement and resale could not be prevented.
(Updated 4-6-98)
Andrew Lloyd Webber's "Phantom Song" May Have Infringed
Briefed Case
Appeals court reversed summary judgment in favor of the writer of "The Phantom of the Opera," finding that the author of an earlier copyrighted song showed "striking similarity" between the two songs and noted that infringement can be unintentional.
(Updated 2-3-98)
Evidence of Utility of Invention Needed to Establish Priority for Patent
Briefed Case
L'Oreal filed a patent application before Estee Lauder for the same substance. Lauder's attempt to overcome L'Oreal's earlier filing fails because it could not show that it had tested the invention to establish its utility before the L'Oreal filing.
(Updated 12-29-97)
A Trademark May Be Distinguished from a Trade Name
Briefed Case
Competitor brothers both used the name "Boney's Marketplace" in reference to private label goods. Just because one brother had the right to use that trade name on his grocery stores does not necessarily mean he has sole right to that name as a trademark on private label goods.
(Updated 11-14-97)
Program Producer Must Pay Poster Artist a Fee for Using Poster on TV Program Background
Briefed Case
Artist saw her commercially successful poster appear in the background for 27 seconds during a TV sitcom. Appeals court held such usage is not de minimis and suit for infringement for failure to pay license fee for such use may proceed.
(Updated 11-14-97)
No Damages for Infringing a Patent that Fails for Obviousness
Briefed Case
Richardson-Vicks marketed several medicines under a patent that combined two common ingredients. Other companies that marketed medicines combining the same ingredients were sued by Richardson-Vicks for infringement. Appeals Court affirmed patent invalid for obviousness.
(Updated 10-15-97)
Honey Brown Beer Is Honey Brown Beer Is Honey Brown Beer
Briefed Case
First brewer of a beer often called "Honey Brown" cannot have trademark protection for those words since they are generic in describing beer. Brewer may have a cause of action for unfair competition if it can show that other brewers intended to create confusion among brands all using the same generic terms.
(Updated 10-3-97)

All Patents Are Not Created "Equivalent"
Briefed Case
US Supreme Court reversed and remanded patent infringement injuction because the lower courts failed to apply the doctrine of equivalents to individual elements of the patent and not the investion as a whole.
(Updated September 12, 1997)

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SW Legal's Case Updates: Intellectual Property
Title
Summary
SW Legal Educational Publishing
SW LEGAL'S CASE UPDATES—INTELLECTUAL PROPERTY
West's Case Updates is a West Legal Studies service to provide briefs of the latest state and federal court cases. Review the summaries and, for cases of interest, select the case brief. If you cannot find a case of interest, return to Topic Index .
Title
Summary
Patent Infringer to Pay Damages for Further Infringement, Injunction Denied
Briefed Case
Court held that a patent infringer would pay monetary damages for past and future infringement but that an injunction against future infringement would not be imposed because of the harm to the public, which would lose the use of the good containing the infringement.
(Updated July 2006)
Generic Portion of Service Mark Not Protectable
Briefed Case
Appeals court held that "Bob the Beerman" at Colorado Rockies baseball games could not protect "beerman" from use by Coors brewing. The term is generic and Coors' use of the term would not be confused with the person people at Rockies' games may have seen.
(Updated June 2005)
Bad Behavior by Parties to Trademark Dispute Leads Court to Refuse to Enforce Rights
Briefed Case
Former business partners fought with each other over many issues, including a trademark. The court held that because both behaved badly, it would invoke the unclean hands doctrine and not enforce the trademark rights held by one party.
(Updated April 2005)
General Movie Theme Not Sufficient To Establish Copyright Infringement
Briefed Case
Appeals court held that absent proof that a movie producer had read a script somewhat similar to a later script used in making a movie, and given major differences in the structure of the movie, there was not adequate evidence to support a suit for copyright infringement.
(Updated March 2005)
Confusion Over Trademark Among Non-Buyers May Be Evidence of Infringement
Briefed Case
Appeals court held that a trial over a claim of infringement on a trademark could proceed. While the original mark holder could not show lost sales, if it could show confusion among prospective customers, it may have a claim under the Lanham Act.
(Updated November 2004)
Copyright Must Be Registered for Court to Have Jurisdiction in Infringement Suits
Briefed Case
Appeals court affirmed that under the Copyright Act an infringement claim could be made only if the copyright has been registered. A copyright on an original product does not extend protection to derivative works; they must also be registered before an infringement suit may proceed.
(Updated February 2004)
Swimming Program May Be Protected Trade Secret
Briefed Case
A group of swim instructors left their employer who had developed a special swim program for infants. The former employees went into direct competition. An appeals court held it was to be determined at trial if the program was due trade secret protection.
(Updated January 2004)
Misappropriation-of-Name Tort Not Same as Right-of-Publicity Tort
Briefed Case
Missouri high court held that when the name and likeness of a well-known person is used for commercial purposes, the tort is right-of publicity, which is misuse of name for commercial purposes, not misappropriation-of-name, which involves misuse of name that violates personal dignity.
(Updated October 2003)
Trademark Dilution Requires Proof of Injury
Briefed Case
Supreme Court held that to sustain a claim of trademark dilution under the Federal Trademark Dilution Act, a plaintiff must prove actual dilution by establishing economic injury to the mark, rather than just assert a likelihood of dilution.
(Updated June 2003)
Consultants to Software Users May Not Copy and Resell Software
Briefed Case
Appeals court held that the owner of a proprietary software program had a cause of action for copyright violation and trade secret misappropriation against a consultant who copied the program and incorporated it into its own proprietary program that it sold.
(Updated April 2003)
Breach of Contract No Excuse for Trademark Infringement
Briefed Case
Appeals court held that when a French manufacturer breached its distribution agreement for its trademarked goods in the U.S., the U.S. distributor did not have the right to then obtain counterfeit goods to sell instead. The trademark rights in the U.S. revert to its owner, and the U.S. distributor must cease sales of counterfeit goods.
(Updated March 2003)
Use of Photograph for Commercial Purposes without Payment Is Unjust Enrichment
Briefed Case
Appeals court held that the trial court properly found that on grounds of unjust enrichment, a commercial photographer was due payment of royalties for mass reproduction of a photograph that was used without permission. The damages would be estimated based on industry standard payment rate.
(Updated March 2003)
Claim that Harry Potter Infringed on Preexisting Work Found Fraudulent
Briefed Case
Trial court held that the author of the Harry Potter series of books did not infringe on the copyright or trademark claims of an earlier author who used the term "muggles" that appears in the Potter books. Sanctions were imposed on the earlier author who falsified evidence to support her claim of infringement.
(Updated January 2003)
Marks That Have No Public Recognition Have Little Protection
Briefed Case
Appeals court held that in a contest between two firms over the use of a particular term, the complaining firm failed to show that the other firm had infringed on its use of the term because it had not acquired secondary meaning.
(Updated December 2002)
Public Use of Invention Prior to Patent Filing Means No Patent Available
Briefed Case
Appeals court held that when an inventor showed others how his invention worked, but did not impose an obligation of confidentiality, there was public use of the invention before the patent application was filed, which made patents he later received invalid.
(Updated December 2002)
Assignment of Trademark May Be Perpetual and Not Affected by Later Registration
Briefed Case
Appeals court held that an assignment of a trademark, without compensation, decades before the trademark was registered, was a valid perpetual assignment that may not be revoked by the holder of the registered mark.
(Updated November 2002)
Patent License Agreements Must End When Patent Expires
Briefed Case
Appeals court held that patent license agreements may not be enforced beyond the expiration date of the patent. The Supreme Court has made it clear that to allow royalties to be paid to patent owners beyond the expiration date is an extension of the monopoly privilege granted by patent that will not be allowed.
(Updated September 2002)
Protected Proprietary Process Not Trade Secret if Subject to Reverse Engineering
Briefed Case
Mississippi high court held that while a company did make efforts to protect its bid process on steel fabrication jobs, and the process was valuable to the firm, a person skilled in the field could figure out the bid process, so it was not a trade secret.
(Updated April 2002)
Copying Words, Not Ideas, Needed for Copyright Infringement
Briefed Case
Court refused to issue injunction against the sale of a book alleged to contain infringed copyrighted material. A likelihood of success on the merits must be shown to justify an injunction. That did not occur because only 15 sentences in an entire book were shown to have been copied.
(Updated March 2002)
"Innocent Infringer" Liable for Compensatory Damages
Briefed Case
Appeals court affirmed that compensatory damages may be imposed on an innocent infringer. A telephone company left a business name in a listing when it had been instructed to delete the name. The result was a loss of business to the listing company. The mistake was innocent but not objectively reasonable.
(Updated February 2002)
Goods Sold More Than One Year Prior to Filing of Patent Application May Not Be Patented
Briefed Case
Appeals court affirmed that a patent was invalid, so it could not be infringed, because the invention was sold commercially more than one year before the patent application was filed. In such cases, no patent should be issued.
(Updated October 1, 2001)
Confusion Unlikely Between Marks, So Both Allowed to Stand
Briefed Case
Court denied a request by the owner of the trademark, "Origins," to prohibit the use of "Natural Origins." The first trademark, while strong, is used on cosmetics and looks quite different from the other trademark, which is used on women's clothing. There is no likelihood of consumer confusion.
(Updated October 1, 2001)
Phrase in Copyrighted Song Not Protected Against All Uses of Phrase
Briefed Case
Court dismissed a suit brought by a song writer who copyrighted a song that contains the phrase "Texas Thunder." Because that phrase is not original, the owner of the song copyright cannot prevent others from using the phrase in music or in other market applications.
(Updated October 1, 2001)
Damages for Trade Secret Theft Must Have Some Reasonable Basis
Briefed Case
An Appeals court upheld the award of $4.6 million for trade secret misappropriation as being justified by expert testimony about the cost of development of such information, even if the information was not used by the defendant to generate profits.
(Updated September 1, 2001)
Attorney Fees Allowed for Prevailing Party Under Lanham Act When Suit Not Justified
Briefed Case
Appeals court upheld the award of attorney fees to a defendant who prevailed in a trademark infringement suit brought under the Lanham Act. Because the suit itself was meritless and because the plaintiff engaged in legal acts that drove up the legal expenses of the defendant, the award was proper.
(Updated September 1, 2001)
Reprinting of Copyrighted Articles in Electronic Databases without Permission Is Infringement
Briefed Case
Supreme Court held that periodicals that publish copyrighted articles by various authors do not have the right to republish the articles in other forms, such as electronic databases, without permission of the authors.
(Updated August 1, 2001)
Copyrighted Symbols Placed on Clothing May Have Been Infringed by Similar Designs
Briefed Case
District court refused to dismiss a suit brought by a clothing designer that placed copyrighted symbols on its clothing. Clothing sold by Wal-Mart contained symbols that were sufficiently similar to raise the possibility of infringement, so the case could proceed.
(Updated August 1, 2001)
Use of Patent for Government Contract Is Defense Against Infringement
Briefed Case
One company made use of a patented device produced by another company, which then sued for infringement. The appeals court affirmed that the user of the device had an affirmative defense since the use was strictly for the benefit of the government.
(Updated August 1, 2001)
Jury Could Find That Suggested Team Design Faxed to Team Was Copyrighted and Infringed
Briefed Case
Appeals court upheld the refusal of a trial court to overturn a jury verdict in favor of a fan of the Baltimore Ravens who faxed the team a suggested logo that he copyrighted later, which turned out to be "strikingly similar" to the logo soon adopted by the team.
(Updated May 1, 2001)
Former Member of Steppenwolf Is Who He Says He Is
Briefed Case
Appeals court held that a former member of the band Steppenwolf has the right to identify himself as such. To do so is not trademark infringement. He never contracted away the right to refer truthfully to his past position. There would be no confusion on the part of consumers if the former association were properly stated.
(Updated May 1, 2001)
Expired Patents Rarely Will Product Trade Dress Protection for Product
Briefed Case
The Supreme Court held that a product that had been protected by a patent, now expired, whose patent feature was now being copied by competitors, was not due trade dress protection. The patent protection was for a functional device, not distinctive product packaging or presentation that is ornamental or incidental to the design of the product.
(Updated May 1, 2001)
Failure to Show Confusion Over Marks Means Mark Application Will Stand
Briefed Case
An Appeals court reviewed the factors used to determine if a trademark application will be rejected. The Trademark Board improperly decided that there would be confusion between existing marks and a new mark, but failed to provide evidence of confusion, so the new mark will be allowed.
(Updated February 1, 2001)
Likelihood of Confusion Justifies Cancelling of Trademark to Protect Senior Mark
Briefed Case
Appeals court upheld the decision of the Trademark Trial and Appeal Board to cancel "laserswing," a mark registered years later than the mark "laser." Since both marks apply to golfing items, there is a likelihood of confusion in that market and the senior mark is due protection.
(Updated January 1, 2001)
No Misappropriation of Identity of Minor Movie Figure in Toy Based on Movie
Briefed Case
Appeals court upheld the dismissal of a suit brought by a supporting actor from a movie that spawned a line of small toys. The toy does not look like the character or the actor, and there was no evidence that the persona in question had commercial value that could be misappropriated.
(Updated January 1, 2001)
Repairing Worn Part on Patented Machine Is Not Infringement
Briefed Case
An Appeals court upheld lower court verdict that for a company to do repair work, including part replacement, to a patented item was not infringement. That would happen if the work went beyond repair and involved construction of equivalent items.
(Updated December 1, 2000)
Designs Similar, But Not Close Enough to Constitute Copyright Infringement
Briefed Case
Court dismissed a copyright design infringement claim brought by a diamond seller against a competitor. While the design was copyrighted, the competitor's design was different enough, given the similarity of ring designs in the market, to defeat the claim. The design had no achieved secondary meaning in the market.
(Updated December 1, 2000)
Slim Cigarette Design Too Obvious to Be Patented
Briefed Case
Appeals court upheld trial court decision that a patent held by a cigarette maker for cigarettes with a smaller circumference than standard cigarettes was invalid for obviousness. The design was obvious to one of ordinary skill in the art. Hence, there could be no claim of infringement.
(Updated December 1, 2000)
Product Designs Must Have Secondary Meaning for Trade Dress Protection
Briefed Case
Supreme Court reversed lower courts by holding that Wal-Mart was not liable for infringement for having made knock-off clothing based on designs by a clothing designer. Trade dress is protected if the design has acquired secondary meaning to the consumer.
(Updated June 1, 2000)
"Express" in Trademark Is Descriptive Term Due Little Protection
Briefed Case
Trial court held that there was no likelihood of confusion between the trademarks "Express Services" and "Careers Express" since no confusion among consumers had been shown. Since "express" is a descriptive term, it is due less protection than stronger marks.
(Updated February 1, 2000)
Full Trial Required to Determine Claim of Patent Invalidity
Briefed Case
Appeals court reversed district court granting summary judgment in favor of party accused of infringing a patent. When a defendant claims a patent is invalid, the evidence must be clear and convincing for defendant to be granted summary judgment. That was not the case here, as defendant's evidence did not rise to that level.
(Updated November 1, 1999)
Musician's Right of Publicity Violated by Use of His Name in Advertisement
Briefed Case
Musician Don Henley's name was used in playful manner in a department store ad for a shirt called Don's henley. Trial court granted summary judgment on the fact that such use for commercial purpose appropriated Henley's name, a violation of his right of publicity.
(Updated September 1, 1999)
Patent Invalid for Anticipation Must Have Been Clearly Anticipated in Prior Patent
Briefed Case
Federal Circuit reversed a district court decision invalidating a patent for anticipation because it was not clearly established at trial that previously issued patents had clearly anticipated the later issued patent.
(Updated September 1, 1999)
Individual Citizen Can Challenge Registration of O.J. Simpson's Trademarks
Briefed Case
The Federal Circuit reversed a holding of the Trademark Board that denied the right of a citizen to oppose the registration of O.J. Simpson as a trademark. Immoral and scandalous material may not be registered under the Lanham Act. That standard is decided by public opinion, not the personal views of members of the Board.
(Updated June 1, 1999)
Second Maker of Laminated, Foldable Maps Did Not Infringe on Originator
Briefed Case
Appeals court upheld rejection of a claim of trademark and copyright violation brought against a firm, Streetsmart, which made laminated, foldable maps similar to those of the originator, Streetwise.
(Updated May 1, 1999)
Memorized Customer Lists May be Trade Secrets
Briefed Case
Washington high court held that valuable customer lists, which had been reasonably protected by an employer, were protected under the Uniform Trade Secrets Act. Former employees who memorized the list and used the information in competition with their former employer were liable for damages.
(Updated May 1, 1999)
Harley Is Not the Only Hog
Briefed Case
Appeals court held that Harley-Davidson had improperly appropriated the word hog, in reference to large motorcycles. Hog had been in common public use before Harley claimed the term, so it remains generic.
(Updated April 1, 1999)
No Trade Secret Created Using Delinquent Tax Data
Briefed Case
Appeals court held that no trade secret had been created, and therefore was not misappropriated by a former employee who used the technique of his former employer of paying delinquent taxes and then bidding on property sold at public auction.
(Updated March 1, 1999)
Clock Can Run on Patent Application Even if Invention Not Physically Produced
Briefed Case
Supreme Court held that the one year on-sale period for a patent runs from when the invention is offered for sale and could be reduced to practice by one skilled in the art, not from which when the invention is actually reduced to physical production.
(Updated January 1, 1999)
Idea Expressed on T-Shirt Not Protected by Copyright
Briefed Case
Appeals court upheld dismissal of infringement claim and award of attorney fees to defendant whose souvenir t-shirts imitated the sentiment of copyrighted t-shirts but did not copy the original design.
(Updated January 1, 1999)
Known Components Can Constitute Trade Secret
Briefed Case
Georgia high court upheld injunction against competitor that hired employee who had been in charge of development of complicated company logistics system that saved substantial sums. Trade secret protection extends to known facts combined in original ways that give competitive advantage.
(Updated 10-19-98)
Brief Use of Copyrighted Photos in Movie is De Minimis
Briefed Case
Use of copyrighted photographs in background of movie set for brief period is fair use because the appearance was brief, the photos were not easily identifiable, and largely out of focus.
(Updated 10-5-98)
Rents from Rent All Accrue to Author
Briefed Case
Professional writer hired to improve Broadway play's script did not obtain co-authorship and, thereby, did not obtain copyright interests in play, which remained with original author.
(Updated 10-5-98)
Stepping on Blue Suede Shoes Is Infringement
Briefed Case
Nightclub called "The Velvet Elvis" that used Elvis Presley theme violated trademark and service mark rights of owner of Presley trademarks and publicity rights. Parody is not a defense against infringement.
(Updated 10-5-98)
Rock and Roll Museum May Not Be Trademark Heaven
Briefed Case
Photographer's commercial exploitation of a photo of the Rock and Roll Hall of Fame, with that name attached, may not violate the trademarks attached to the name or the likeness of the building. Use of building likeness by trademark holder was inconsistent and name use may be fair use.
(Updated 4-6-98)
Copyrighted Gray Market Goods May Not Be Stopped By Copyright Owner
Briefed Case
Reimporter of copyrighted product sold for less in foreign than domestic markets undersold producer in domestic market who controlled distribution within the country. Under first sale doctrine, Supreme Court held that there was no infringement and resale could not be prevented.
(Updated 4-6-98)
Andrew Lloyd Webber's "Phantom Song" May Have Infringed
Briefed Case
Appeals court reversed summary judgment in favor of the writer of "The Phantom of the Opera," finding that the author of an earlier copyrighted song showed "striking similarity" between the two songs and noted that infringement can be unintentional.
(Updated 2-3-98)
Evidence of Utility of Invention Needed to Establish Priority for Patent
Briefed Case
L'Oreal filed a patent application before Estee Lauder for the same substance. Lauder's attempt to overcome L'Oreal's earlier filing fails because it could not show that it had tested the invention to establish its utility before the L'Oreal filing.
(Updated 12-29-97)
A Trademark May Be Distinguished from a Trade Name
Briefed Case
Competitor brothers both used the name "Boney's Marketplace" in reference to private label goods. Just because one brother had the right to use that trade name on his grocery stores does not necessarily mean he has sole right to that name as a trademark on private label goods.
(Updated 11-14-97)
Program Producer Must Pay Poster Artist a Fee for Using Poster on TV Program Background
Briefed Case
Artist saw her commercially successful poster appear in the background for 27 seconds during a TV sitcom. Appeals court held such usage is not de minimis and suit for infringement for failure to pay license fee for such use may proceed.
(Updated 11-14-97)
No Damages for Infringing a Patent that Fails for Obviousness
Briefed Case
Richardson-Vicks marketed several medicines under a patent that combined two common ingredients. Other companies that marketed medicines combining the same ingredients were sued by Richardson-Vicks for infringement. Appeals Court affirmed patent invalid for obviousness.
(Updated 10-15-97)
Honey Brown Beer Is Honey Brown Beer Is Honey Brown Beer
Briefed Case
First brewer of a beer often called "Honey Brown" cannot have trademark protection for those words since they are generic in describing beer. Brewer may have a cause of action for unfair competition if it can show that other brewers intended to create confusion among brands all using the same generic terms.
(Updated 10-3-97)

All Patents Are Not Created "Equivalent"
Briefed Case
US Supreme Court reversed and remanded patent infringement injuction because the lower courts failed to apply the doctrine of equivalents to individual elements of the patent and not the investion as a whole.
(Updated September 12, 1997)

©1997-2005  West Legal Studies in Business. All Rights Reserved.     

Patent Infringer to Pay Damages for Further Infringement, Injunction Denied
Briefed Case
Court held that a patent infringer would pay monetary damages for past and future infringement but that an injunction against future infringement would not be imposed because of the harm to the public, which would lose the use of the good containing the infringement.
(Updated July 2006)
Generic Portion of Service Mark Not Protectable
Briefed Case
Appeals court held that "Bob the Beerman" at Colorado Rockies baseball games could not protect "beerman" from use by Coors brewing. The term is generic and Coors' use of the term would not be confused with the person people at Rockies' games may have seen.
(Updated June 2005)
Bad Behavior by Parties to Trademark Dispute Leads Court to Refuse to Enforce Rights
Briefed Case
Former business partners fought with each other over many issues, including a trademark. The court held that because both behaved badly, it would invoke the unclean hands doctrine and not enforce the trademark rights held by one party.
(Updated April 2005)
General Movie Theme Not Sufficient To Establish Copyright Infringement
Briefed Case
Appeals court held that absent proof that a movie producer had read a script somewhat similar to a later script used in making a movie, and given major differences in the structure of the movie, there was not adequate evidence to support a suit for copyright infringement.
(Updated March 2005)
Confusion Over Trademark Among Non-Buyers May Be Evidence of Infringement
Briefed Case
Appeals court held that a trial over a claim of infringement on a trademark could proceed. While the original mark holder could not show lost sales, if it could show confusion among prospective customers, it may have a claim under the Lanham Act.
(Updated November 2004)
Copyright Must Be Registered for Court to Have Jurisdiction in Infringement Suits
Briefed Case
Appeals court affirmed that under the Copyright Act an infringement claim could be made only if the copyright has been registered. A copyright on an original product does not extend protection to derivative works; they must also be registered before an infringement suit may proceed.
(Updated February 2004)
Swimming Program May Be Protected Trade Secret
Briefed Case
A group of swim instructors left their employer who had developed a special swim program for infants. The former employees went into direct competition. An appeals court held it was to be determined at trial if the program was due trade secret protection.
(Updated January 2004)
Misappropriation-of-Name Tort Not Same as Right-of-Publicity Tort
Briefed Case
Missouri high court held that when the name and likeness of a well-known person is used for commercial purposes, the tort is right-of publicity, which is misuse of name for commercial purposes, not misappropriation-of-name, which involves misuse of name that violates personal dignity.
(Updated October 2003)
Trademark Dilution Requires Proof of Injury
Briefed Case
Supreme Court held that to sustain a claim of trademark dilution under the Federal Trademark Dilution Act, a plaintiff must prove actual dilution by establishing economic injury to the mark, rather than just assert a likelihood of dilution.
(Updated June 2003)
Consultants to Software Users May Not Copy and Resell Software
Briefed Case
Appeals court held that the owner of a proprietary software program had a cause of action for copyright violation and trade secret misappropriation against a consultant who copied the program and incorporated it into its own proprietary program that it sold.
(Updated April 2003)
Breach of Contract No Excuse for Trademark Infringement
Briefed Case
Appeals court held that when a French manufacturer breached its distribution agreement for its trademarked goods in the U.S., the U.S. distributor did not have the right to then obtain counterfeit goods to sell instead. The trademark rights in the U.S. revert to its owner, and the U.S. distributor must cease sales of counterfeit goods.
(Updated March 2003)
Use of Photograph for Commercial Purposes without Payment Is Unjust Enrichment
Briefed Case
Appeals court held that the trial court properly found that on grounds of unjust enrichment, a commercial photographer was due payment of royalties for mass reproduction of a photograph that was used without permission. The damages would be estimated based on industry standard payment rate.
(Updated March 2003)
Claim that Harry Potter Infringed on Preexisting Work Found Fraudulent
Briefed Case
Trial court held that the author of the Harry Potter series of books did not infringe on the copyright or trademark claims of an earlier author who used the term "muggles" that appears in the Potter books. Sanctions were imposed on the earlier author who falsified evidence to support her claim of infringement.
(Updated January 2003)
Marks That Have No Public Recognition Have Little Protection
Briefed Case
Appeals court held that in a contest between two firms over the use of a particular term, the complaining firm failed to show that the other firm had infringed on its use of the term because it had not acquired secondary meaning.
(Updated December 2002)
Public Use of Invention Prior to Patent Filing Means No Patent Available
Briefed Case
Appeals court held that when an inventor showed others how his invention worked, but did not impose an obligation of confidentiality, there was public use of the invention before the patent application was filed, which made patents he later received invalid.
(Updated December 2002)
Assignment of Trademark May Be Perpetual and Not Affected by Later Registration
Briefed Case
Appeals court held that an assignment of a trademark, without compensation, decades before the trademark was registered, was a valid perpetual assignment that may not be revoked by the holder of the registered mark.
(Updated November 2002)
Patent License Agreements Must End When Patent Expires
Briefed Case
Appeals court held that patent license agreements may not be enforced beyond the expiration date of the patent. The Supreme Court has made it clear that to allow royalties to be paid to patent owners beyond the expiration date is an extension of the monopoly privilege granted by patent that will not be allowed.
(Updated September 2002)
Protected Proprietary Process Not Trade Secret if Subject to Reverse Engineering
Briefed Case
Mississippi high court held that while a company did make efforts to protect its bid process on steel fabrication jobs, and the process was valuable to the firm, a person skilled in the field could figure out the bid process, so it was not a trade secret.
(Updated April 2002)
Copying Words, Not Ideas, Needed for Copyright Infringement
Briefed Case
Court refused to issue injunction against the sale of a book alleged to contain infringed copyrighted material. A likelihood of success on the merits must be shown to justify an injunction. That did not occur because only 15 sentences in an entire book were shown to have been copied.
(Updated March 2002)
"Innocent Infringer" Liable for Compensatory Damages
Briefed Case
Appeals court affirmed that compensatory damages may be imposed on an innocent infringer. A telephone company left a business name in a listing when it had been instructed to delete the name. The result was a loss of business to the listing company. The mistake was innocent but not objectively reasonable.
(Updated February 2002)
Goods Sold More Than One Year Prior to Filing of Patent Application May Not Be Patented
Briefed Case
Appeals court affirmed that a patent was invalid, so it could not be infringed, because the invention was sold commercially more than one year before the patent application was filed. In such cases, no patent should be issued.
(Updated October 1, 2001)
Confusion Unlikely Between Marks, So Both Allowed to Stand
Briefed Case
Court denied a request by the owner of the trademark, "Origins," to prohibit the use of "Natural Origins." The first trademark, while strong, is used on cosmetics and looks quite different from the other trademark, which is used on women's clothing. There is no likelihood of consumer confusion.
(Updated October 1, 2001)
Phrase in Copyrighted Song Not Protected Against All Uses of Phrase
Briefed Case
Court dismissed a suit brought by a song writer who copyrighted a song that contains the phrase "Texas Thunder." Because that phrase is not original, the owner of the song copyright cannot prevent others from using the phrase in music or in other market applications.
(Updated October 1, 2001)
Damages for Trade Secret Theft Must Have Some Reasonable Basis
Briefed Case
An Appeals court upheld the award of $4.6 million for trade secret misappropriation as being justified by expert testimony about the cost of development of such information, even if the information was not used by the defendant to generate profits.
(Updated September 1, 2001)
Attorney Fees Allowed for Prevailing Party Under Lanham Act When Suit Not Justified
Briefed Case
Appeals court upheld the award of attorney fees to a defendant who prevailed in a trademark infringement suit brought under the Lanham Act. Because the suit itself was meritless and because the plaintiff engaged in legal acts that drove up the legal expenses of the defendant, the award was proper.
(Updated September 1, 2001)
Reprinting of Copyrighted Articles in Electronic Databases without Permission Is Infringement
Briefed Case
Supreme Court held that periodicals that publish copyrighted articles by various authors do not have the right to republish the articles in other forms, such as electronic databases, without permission of the authors.
(Updated August 1, 2001)
Copyrighted Symbols Placed on Clothing May Have Been Infringed by Similar Designs
Briefed Case
District court refused to dismiss a suit brought by a clothing designer that placed copyrighted symbols on its clothing. Clothing sold by Wal-Mart contained symbols that were sufficiently similar to raise the possibility of infringement, so the case could proceed.
(Updated August 1, 2001)
Use of Patent for Government Contract Is Defense Against Infringement
Briefed Case
One company made use of a patented device produced by another company, which then sued for infringement. The appeals court affirmed that the user of the device had an affirmative defense since the use was strictly for the benefit of the government.
(Updated August 1, 2001)
Jury Could Find That Suggested Team Design Faxed to Team Was Copyrighted and Infringed
Briefed Case
Appeals court upheld the refusal of a trial court to overturn a jury verdict in favor of a fan of the Baltimore Ravens who faxed the team a suggested logo that he copyrighted later, which turned out to be "strikingly similar" to the logo soon adopted by the team.
(Updated May 1, 2001)
Former Member of Steppenwolf Is Who He Says He Is
Briefed Case
Appeals court held that a former member of the band Steppenwolf has the right to identify himself as such. To do so is not trademark infringement. He never contracted away the right to refer truthfully to his past position. There would be no confusion on the part of consumers if the former association were properly stated.
(Updated May 1, 2001)
Expired Patents Rarely Will Product Trade Dress Protection for Product
Briefed Case
The Supreme Court held that a product that had been protected by a patent, now expired, whose patent feature was now being copied by competitors, was not due trade dress protection. The patent protection was for a functional device, not distinctive product packaging or presentation that is ornamental or incidental to the design of the product.
(Updated May 1, 2001)
Failure to Show Confusion Over Marks Means Mark Application Will Stand
Briefed Case
An Appeals court reviewed the factors used to determine if a trademark application will be rejected. The Trademark Board improperly decided that there would be confusion between existing marks and a new mark, but failed to provide evidence of confusion, so the new mark will be allowed.
(Updated February 1, 2001)
Likelihood of Confusion Justifies Cancelling of Trademark to Protect Senior Mark
Briefed Case
Appeals court upheld the decision of the Trademark Trial and Appeal Board to cancel "laserswing," a mark registered years later than the mark "laser." Since both marks apply to golfing items, there is a likelihood of confusion in that market and the senior mark is due protection.
(Updated January 1, 2001)
No Misappropriation of Identity of Minor Movie Figure in Toy Based on Movie
Briefed Case
Appeals court upheld the dismissal of a suit brought by a supporting actor from a movie that spawned a line of small toys. The toy does not look like the character or the actor, and there was no evidence that the persona in question had commercial value that could be misappropriated.
(Updated January 1, 2001)
Repairing Worn Part on Patented Machine Is Not Infringement
Briefed Case
An Appeals court upheld lower court verdict that for a company to do repair work, including part replacement, to a patented item was not infringement. That would happen if the work went beyond repair and involved construction of equivalent items.
(Updated December 1, 2000)
Designs Similar, But Not Close Enough to Constitute Copyright Infringement
Briefed Case
Court dismissed a copyright design infringement claim brought by a diamond seller against a competitor. While the design was copyrighted, the competitor's design was different enough, given the similarity of ring designs in the market, to defeat the claim. The design had no achieved secondary meaning in the market.
(Updated December 1, 2000)
Slim Cigarette Design Too Obvious to Be Patented
Briefed Case
Appeals court upheld trial court decision that a patent held by a cigarette maker for cigarettes with a smaller circumference than standard cigarettes was invalid for obviousness. The design was obvious to one of ordinary skill in the art. Hence, there could be no claim of infringement.
(Updated December 1, 2000)
Product Designs Must Have Secondary Meaning for Trade Dress Protection
Briefed Case
Supreme Court reversed lower courts by holding that Wal-Mart was not liable for infringement for having made knock-off clothing based on designs by a clothing designer. Trade dress is protected if the design has acquired secondary meaning to the consumer.
(Updated June 1, 2000)
"Express" in Trademark Is Descriptive Term Due Little Protection
Briefed Case
Trial court held that there was no likelihood of confusion between the trademarks "Express Services" and "Careers Express" since no confusion among consumers had been shown. Since "express" is a descriptive term, it is due less protection than stronger marks.
(Updated February 1, 2000)
Full Trial Required to Determine Claim of Patent Invalidity
Briefed Case
Appeals court reversed district court granting summary judgment in favor of party accused of infringing a patent. When a defendant claims a patent is invalid, the evidence must be clear and convincing for defendant to be granted summary judgment. That was not the case here, as defendant's evidence did not rise to that level.
(Updated November 1, 1999)
Musician's Right of Publicity Violated by Use of His Name in Advertisement
Briefed Case
Musician Don Henley's name was used in playful manner in a department store ad for a shirt called Don's henley. Trial court granted summary judgment on the fact that such use for commercial purpose appropriated Henley's name, a violation of his right of publicity.
(Updated September 1, 1999)
Patent Invalid for Anticipation Must Have Been Clearly Anticipated in Prior Patent
Briefed Case
Federal Circuit reversed a district court decision invalidating a patent for anticipation because it was not clearly established at trial that previously issued patents had clearly anticipated the later issued patent.
(Updated September 1, 1999)
Individual Citizen Can Challenge Registration of O.J. Simpson's Trademarks
Briefed Case
The Federal Circuit reversed a holding of the Trademark Board that denied the right of a citizen to oppose the registration of O.J. Simpson as a trademark. Immoral and scandalous material may not be registered under the Lanham Act. That standard is decided by public opinion, not the personal views of members of the Board.
(Updated June 1, 1999)
Second Maker of Laminated, Foldable Maps Did Not Infringe on Originator
Briefed Case
Appeals court upheld rejection of a claim of trademark and copyright violation brought against a firm, Streetsmart, which made laminated, foldable maps similar to those of the originator, Streetwise.
(Updated May 1, 1999)
Memorized Customer Lists May be Trade Secrets
Briefed Case
Washington high court held that valuable customer lists, which had been reasonably protected by an employer, were protected under the Uniform Trade Secrets Act. Former employees who memorized the list and used the information in competition with their former employer were liable for damages.
(Updated May 1, 1999)
Harley Is Not the Only Hog
Briefed Case
Appeals court held that Harley-Davidson had improperly appropriated the word hog, in reference to large motorcycles. Hog had been in common public use before Harley claimed the term, so it remains generic.
(Updated April 1, 1999)
No Trade Secret Created Using Delinquent Tax Data
Briefed Case
Appeals court held that no trade secret had been created, and therefore was not misappropriated by a former employee who used the technique of his former employer of paying delinquent taxes and then bidding on property sold at public auction.
(Updated March 1, 1999)
Clock Can Run on Patent Application Even if Invention Not Physically Produced
Briefed Case
Supreme Court held that the one year on-sale period for a patent runs from when the invention is offered for sale and could be reduced to practice by one skilled in the art, not from which when the invention is actually reduced to physical production.
(Updated January 1, 1999)
Idea Expressed on T-Shirt Not Protected by Copyright
Briefed Case
Appeals court upheld dismissal of infringement claim and award of attorney fees to defendant whose souvenir t-shirts imitated the sentiment of copyrighted t-shirts but did not copy the original design.
(Updated January 1, 1999)
Known Components Can Constitute Trade Secret
Briefed Case
Georgia high court upheld injunction against competitor that hired employee who had been in charge of development of complicated company logistics system that saved substantial sums. Trade secret protection extends to known facts combined in original ways that give competitive advantage.
(Updated 10-19-98)
Brief Use of Copyrighted Photos in Movie is De Minimis
Briefed Case
Use of copyrighted photographs in background of movie set for brief period is fair use because the appearance was brief, the photos were not easily identifiable, and largely out of focus.
(Updated 10-5-98)
Rents from Rent All Accrue to Author
Briefed Case
Professional writer hired to improve Broadway play's script did not obtain co-authorship and, thereby, did not obtain copyright interests in play, which remained with original author.
(Updated 10-5-98)
Stepping on Blue Suede Shoes Is Infringement
Briefed Case
Nightclub called "The Velvet Elvis" that used Elvis Presley theme violated trademark and service mark rights of owner of Presley trademarks and publicity rights. Parody is not a defense against infringement.
(Updated 10-5-98)
Rock and Roll Museum May Not Be Trademark Heaven
Briefed Case
Photographer's commercial exploitation of a photo of the Rock and Roll Hall of Fame, with that name attached, may not violate the trademarks attached to the name or the likeness of the building. Use of building likeness by trademark holder was inconsistent and name use may be fair use.
(Updated 4-6-98)
Copyrighted Gray Market Goods May Not Be Stopped By Copyright Owner
Briefed Case
Reimporter of copyrighted product sold for less in foreign than domestic markets undersold producer in domestic market who controlled distribution within the country. Under first sale doctrine, Supreme Court held that there was no infringement and resale could not be prevented.
(Updated 4-6-98)
Andrew Lloyd Webber's "Phantom Song" May Have Infringed
Briefed Case
Appeals court reversed summary judgment in favor of the writer of "The Phantom of the Opera," finding that the author of an earlier copyrighted song showed "striking similarity" between the two songs and noted that infringement can be unintentional.
(Updated 2-3-98)
Evidence of Utility of Invention Needed to Establish Priority for Patent
Briefed Case
L'Oreal filed a patent application before Estee Lauder for the same substance. Lauder's attempt to overcome L'Oreal's earlier filing fails because it could not show that it had tested the invention to establish its utility before the L'Oreal filing.
(Updated 12-29-97)
A Trademark May Be Distinguished from a Trade Name
Briefed Case
Competitor brothers both used the name "Boney's Marketplace" in reference to private label goods. Just because one brother had the right to use that trade name on his grocery stores does not necessarily mean he has sole right to that name as a trademark on private label goods.
(Updated 11-14-97)
Program Producer Must Pay Poster Artist a Fee for Using Poster on TV Program Background
Briefed Case
Artist saw her commercially successful poster appear in the background for 27 seconds during a TV sitcom. Appeals court held such usage is not de minimis and suit for infringement for failure to pay license fee for such use may proceed.
(Updated 11-14-97)
No Damages for Infringing a Patent that Fails for Obviousness
Briefed Case
Richardson-Vicks marketed several medicines under a patent that combined two common ingredients. Other companies that marketed medicines combining the same ingredients were sued by Richardson-Vicks for infringement. Appeals Court affirmed patent invalid for obviousness.
(Updated 10-15-97)
Honey Brown Beer Is Honey Brown Beer Is Honey Brown Beer
Briefed Case
First brewer of a beer often called "Honey Brown" cannot have trademark protection for those words since they are generic in describing beer. Brewer may have a cause of action for unfair competition if it can show that other brewers intended to create confusion among brands all using the same generic terms.
(Updated 10-3-97)

All Patents Are Not Created "Equivalent"
Briefed Case
US Supreme Court reversed and remanded patent infringement injuction because the lower courts failed to apply the doctrine of equivalents to individual elements of the patent and not the investion as a whole.
(Updated September 12, 1997)

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