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Intellectual Property Notes 01/15/2009
Patent Summaries    Trademark Summaries    Copyright Summaries


Headlines

Patent Cases:
Fed Cir - Revised Comiskey decision remands machine claims (7-5).
Trademark Cases:
4th Cir - Party purposefully transacted business in forum state.
MD Pa - Fact issues existed regarding likelihood of confusion.
Copyright Cases:
SD NY - No reasonable observer could find substantial similarity.
MD NC - Claim for deceptive trade practices was preempted.  Top


Patent Cases

Fed Cir - Revised Comiskey decision remands machine claims (7-5).
In re Comiskey (1/13/09)  Full Summary  Decision
The revised opinion can be found here.  After Comiskey filed a petition for rehearing en banc, the Federal Circuit granted the petition for the limited purpose of authorizing the panel to revise its opinion.  The only change made in the original decision was to remand the determination that the machine claims were in fact directed to patentable subject matter.  In the opinion of the majority, its decision was entirely consistent with precedent allowing an appellate tribunal to affirm an agency on alternative legal grounds or to remand to the agency to consider an alternative ground.  The issue of whether the involved claims were patentable was fully briefed on appeal and the PTO noted that a precedential decision of the Federal Circuit would give the agency needed guidance in this area.  Top

Trademark Cases

4th Cir - Party purposefully transacted business in forum state.
CFA Institute v. Institute of Chartered Fin. Analysts (1/9/09)  Full Summary  Decision
The trial court reinstated a default judgment in favor of CFA.  By its ruling, the trial court determined that it had jurisdiction over Chartered under FRCP 4(k)(2).  The 4th Circuit concluded that it was unnecessary for the trial court to address this provision because it possessed jurisdiction over Chartered under Virginia's long-arm statute.  The facts revealed the parties' substantial business relationship and established that Chartered purposefully transacted business with CFA in Virginia.  Chartered's first contact with CFA in 1984 sparked ongoing business transactions, by which Chartered repeatedly reached into Virginia to transact business with CFA, invoking the benefits and protections of Virginia law.  Further, CFA's claims clearly arose out of Chartered's Virginia-related activities.

MD Pa - Fact issues existed regarding likelihood of confusion.
BabyAge.com, Inc. v. Leachco, Inc. (1/12/09)  Full Summary  Decision
The court granted in part and denied in part BabyAge's motion for partial summary judgment on Leachco's counterclaims.  Leachco's counterclaim for trademark infringement alleged that by placing hyperlinks to competing products on the Leachco "featured brand" webpage on BabyAge's website, BabyAge infringed Leachco's trademark.  Leachco's mark fell into the arbitrary category and acted as a distinct identifier of origin.  The evidence indicated a sustained and widespread dissemination of Leachco's name and brand.  There was significant overlap in the channels of trade used by the parties and the target consumer group was the same for both companies.  In addition, the parties' competing pillows were extremely similar, differentiated only by small details of shape.  In sum, fact issues existed as to the likelihood of confusion element of Leachco's trademark claim.  Top

Copyright Cases

SD NY - No reasonable observer could find substantial similarity.
Crane v. Poetic Products Ltd. (1/7/09)  Full Summary  Decision
The court granted in part and denied in part Crane's summary judgment motion.  Aside from one example put forth by Poetic, the evidence showed that Crane not only had his own distinct style and wording, but his own distinct medium: a two-act fictional play.  Aside from the one example and various historical quotations, the only substantial similarity in selection, coordination, and arrangement of expression between the two works was the timeline: both were presented in roughly chronological order, although Crane's story was told in a series of flashbacks.  The thin copyright protection afforded to the selection, arrangement, and coordination of facts surely did not extend to the presentation of historical events in the order in which they took place.  Further, a comparison of the two works' plot, theme, and total concept and feel demonstrated that they were not substantially similar.

MD NC - Claim for deceptive trade practices was preempted.
Vogel v. Wolters Kluwer Health, Inc. (12/30/08)  Full Summary  Decision
The court adopted the magistrate judge's recommendation that the court grant defendants' motion to dismiss.  Vogel's false designation of origin claim was barred under the Dastar decision.  Vogel's allegations amounted to claims of false authorship that had to be pursued under copyright law.  In addition, Vogel's claim for unfair and deceptive trade practices under state law was preempted by the Copyright Act.  Vogel's state law claim rested on the same conduct underlying the copyright claim: the alleged copying of material purportedly authored by Vogel and the distribution of medical textbooks containing this material.  Moreover, the court lacked jurisdiction over defendant Trojanowski, as Vogel's claims did not arise out of activities in North Carolina that could be attributed to Trojanowski.  Further, none of Trojanowski's accused activities were expressly aimed at North Carolina.  Top


In re Comiskey (Fed Cir 1/13/09)  Decision  Short Summary
The PTO previously affirmed the examiner's rejection of various claims of the '742 application as obvious.  The Federal Circuit previously affirmed in part, vacated in part, and remanded (the original summary of the case is here).  After Comiskey filed a petition for rehearing en banc, the Federal Circuit granted the petition for the limited purpose of authorizing the panel to revise its opinion.  The revised opinion can be found here.

The only change made in the original decision was to remand the determination that the machine claims were in fact directed to patentable subject matter.  In the original decision, the Federal Circuit held that under the broadest reasonable interpretation, claims 17 and 46 could require the use of a computer as part of the system.  As a result, the Federal Circuit stated in its original decision that these claims, in combining the use of machines with a mental process, recited statutory subject matter.  However, the original decision remanded to the PTO to determine whether the addition of computers and communication devices would have been obvious.  The revised decision remanded the determination that these claims were directed to patentable subject matter.

In the opinion of the majority, its decision was entirely consistent with precedent allowing an appellate tribunal to affirm an agency on alternative legal grounds or to remand to the agency to consider an alternative ground.  It was well established that an appellate court had the power to decide a case on alternative grounds without addressing the original ground for decision.  The issue of whether the involved claims were patentable was fully briefed on appeal and the PTO noted that a precedential decision of the Federal Circuit would give the agency needed guidance.  Thus, addressing the issue was both desirable and appropriate.  (Dissent: Remand was not necessary when the PTO had already rejected the system claims as obvious.  Given that the court had pointed to no flaw in the agency's rejection, the revised decision amounted to a wasteful remand.  It was inappropriate for the court to consider a new ground of rejection on appeal.  There had to be some limit to appellate court authority to review agency action and this court had clearly crossed that line.  The court should have granted a rehearing en banc with full briefing and argument rather than for the limited purpose of authorizing the panel to revise its opinion).  Top


CFA Institute v. Institute of Chartered Fin. (4th Cir 1/9/09)  Decision  Short Summary
CFA sued Chartered for trademark infringement and related claims.  Chartered failed to appear and the trial court entered a default judgment against Chartered.  After an appearance by Chartered, the trial court reinstated the default judgment.  In doing so, the trial court determined that it had jurisdiction over Chartered under FRCP 4(k)(2).  The 4th Circuit affirmed the trial court's judgment on the alternative ground that it possessed personal jurisdiction over Chartered under Virginia's long-arm statute.

CFA is a non-profit association based in Virginia; CFA administers a program of specialized study and testing in the field of financial analysis.  CFA uses the mark "Chartered Financial Analyst" in the course of its business.  Chartered is a corporation located in India and its purpose is the study of corporate finance, financial services, and financial analysis in India.  In 1984, Chartered's founder traveled to Virginia and approached CFA officials about establishing a CFA program in India.  CFA representatives traveled to India in 1985 and a license agreement was then reached.  Pursuant thereto, CFA authorized Chartered to establish a CFA program in India.  Chartered representatives visited CFA in Virginia again in 1987 to attend a board meeting.  In 1994, Chartered sent a letter to CFA requesting expanded permission to use CFA's intellectual property in India.

In 1995, the relationship between the parties began to sour when CFA discovered that Chartered was violating the license agreement by marketing its version of the CFA program in the United States and Canada through written and online materials.  CFA notified Chartered of the breach and the latter promised to rectify the situation; the two also signed a settlement agreement.  When CFA suspected that Chartered was violating the settlement agreement, CFA terminated the license agreement.  When Chartered failed to appear, the trial court entered a default judgment against it.  More than eight years later, Chartered appeared before the trial court and requested that it reopen the proceedings and vacate the default judgment.  Chartered claimed that the default judgment was void because the trial court lacked personal jurisdiction when it was entered.  The trial court reinstated its default judgment order, concluding that Chartered's contacts with the United States as a whole supported a finding of personal jurisdiction under FRCP 4(k)(2).

Chartered argued that the trial court misapplied FRCP 4(k)(2) and erred in concluding that it possessed personal jurisdiction over Chartered.  The 4th Circuit determined that it did not need to address the trial court's analysis under FRCP 4(k)(2) because Virginia's long-arm statute authorized the exercise of personal jurisdiction over Chartered.  The facts revealed the parties' substantial business relationship and established that Chartered purposefully transacted business with CFA in Virginia.  Chartered's first contact with CFA in 1984 sparked ongoing business transactions, by which Chartered repeatedly reached into Virginia to transact business with CFA, invoking the benefits and protections of Virginia law.  Chartered continued to invoke those benefits and protections when it corresponded and collaborated with CFA over a period of approximately thirteen years.  Further, CFA's claims clearly arose out of Chartered's Virginia-related activities.  Chartered's visit to CFA in Virginia prompted the parties to enter the license agreement.  Chartered's subsequent infringement of CFA's rights under the license agreement resulted in the settlement agreement and the breach of that agreement resulted in this suit.  In short, the facts showed a seamless series of business transactions from Chartered's 1984 visit to the filing of the complaint.  Top


BabyAge.com, Inc. v. Leachco, Inc. (MD Pa 1/12/09)  Decision  Short Summary
BabyAge sued Leachco for declaratory judgment and Leachco asserted counterclaims for trademark infringement and patent infringement.  The court granted in part and denied in part BabyAge's motion for partial summary judgment on Leachco's counterclaims.

BabyAge is a retailer of baby and maternity-related goods, which it sells online.  Some of the products are manufactured by BabyAge and sold under its mark; BabyAge also offers products from numerous other manufacturers under different marks, including items made by Leachco.  One of Leachco's products is a contoured body pillow for pregnant women, which is covered by the '934 patent.  BabyAge ordered the pillow from Leachco and offered it for resale on the BabyAge website between 2003 and 2007.  In early 2007, Leachco learned that BabyAge also offers its own pregnancy pillow.  BabyAge's website includes "featured brand" pages separately dedicated to the products of each listed manufacturer.  Leachco is one of the "featured brand" manufacturers on BabyAge's website.  Leachco's page displayed the "Leachco" mark and included a section on pregnancy pillows.  Certain of the text denoted hyperlinks that, when selected, took the viewer to webpages containing pregnancy pillows made by others, including BabyAge.

Leachco's mark fell into the arbitrary category and acted as a distinct identifier of origin.  The mark was federally registered and had been used for over twenty years.  The evidence indicated a sustained and widespread dissemination of Leachco's name and brand.  However, there was no evidence of the kind of care that customers generally exercised when purchasing such a pillow over the Internet.  As reflected in the prior art section of the '934 patent, pregnancy pillows were often distinguished by relatively small differences.  Because this factor was particularly important in establishing likelihood of confusion in a case of initial interest confusion, the facts required further development.  The same could be said of the factor concerning evidence of actual confusion.  There was significant overlap in the channels of trade used by the parties and the target consumer group was the same for both companies.  Both parties sold baby and maternity-related goods and both relied on an Internet consumer base, though Leachco did not rely exclusively on this group.  In addition, the parties' competing pregnancy pillows were extremely similar, differentiated only by small details of shape.  Unless differentiated specifically by brand name, it was unlikely that a consumer could identify the particular source of the competing pillows.  In sum, fact issues existed as to the likelihood of confusion element of Leachco's trademark claim.  Top


Crane v. Poetic Products Ltd. (SD NY 1/7/09)  Decision  Short Summary
Crane sued Poetic for declaratory judgment and Poetic filed counterclaims for copyright infringement and unfair competition.  The court granted in part and denied in part Crane's summary judgment motion.

Crane is the author of The Last Confession, a fictional two-act play based on the historic events surrounding the succession and death of Pope John Paul I.  Crane's play tells the story of the election of John Paul I as Pope, his time in the Vatican, his death, and the aftermath of that death in a series of flashbacks.  Poetic holds a registered copyright for the work entitled In God's Name: An Investigation into the Murder of Pope John Paul I.  This work is a factual investigation of the circumstances surrounding the death of Pope John Paul I in 1978.  The book contains biographical details of the Pope's life, as well as extensive documentation of the financial and political corruption that plagued the Vatican in the 1970s.  Crane seeks a declaratory judgment that his play does not infringe the copyright of Poetic's book.

Clearly, the theory that Pope John Paul I was murdered and the facts surrounding his death were not protectable elements of Poetic's book under copyright law.  However, the book's expression of that theory and surrounding facts (its selection, coordination, and arrangement of theories and facts) was protectable.  Crane's dramatization of certain historical facts, while somewhat similar to the description in Poetic's book, was not substantially similar, partly because the play described the facts through dialogue between two characters, rather than through historical narrative.  Other statements in the book were presented as actual quotations by real people and thus, were historical facts that were not protectable by copyright law.  Other quotes came from actual historical documents and as a result, were not protected by copyright law.  Aside from one example put forth by Poetic, the evidence showed that Crane not only had his own distinct style, but his own distinct medium: a two-act fictional play.  Aside from the one example and various historical quotations, the only substantial similarity in selection, coordination, and arrangement of expression between the two works was the timeline: both were presented in roughly chronological order, although Crane's story was told in a series of flashbacks.  The thin copyright protection afforded to the selection, arrangement, and coordination of facts did not extend to the presentation of historical events in the order in which they took place.  Further, a comparison of the works' plot, theme, and total concept and feel showed that they were not substantially similar.  Top


Vogel v. Wolters Kluwer Health, Inc. (MD NC 12/30/08)  Decision  Short Summary
Vogel sued WKH, related entities (collectively "WKH"), and Trojanowski for copyright infringement, false designation of origin, and other claims.  The court adopted the magistrate judge's recommendation that the court grant defendants' motion to dismiss.

In the early 1980s, Vogel was asked to author a section in a medical textbook titled Pathology, which was published by WKH.  WKH subsequently asked Vogel to update his material for the second and third editions of the textbook.  Vogel alleges that WKH published a fourth edition of the book containing a section on neuropathology that substantially copied the text authored by Vogel, including images that Vogel had selected, compiled, and provided to WKH for use in the earlier editions of the book.  Vogel also alleges that Trojanowski was improperly listed as the sole author of this section in the fourth edition of the textbook.

Vogel's false designation of origin claim was clearly barred under the Dastar decision.  Vogel's allegations amounted to claims of false authorship that had to be pursued under copyright law.  In addition, Vogel's claim for unfair and deceptive trade practices under state law was preempted by the Copyright Act.  Vogel's state law claim rested on the same conduct underlying the copyright infringement claim: the alleged copying of material purportedly authored by Vogel and the distribution of medical textbooks containing this material.  The purported state law rights that Vogel was seeking to enforce were equivalent to the exclusive rights within the scope of federal copyright.  While Vogel argued that his state law claim involved the extra element of deception, the court stated that, at most, Vogel had alleged that WKH knew that it was infringing Vogel's copyrights and that it attempted to keep Vogel from discovering the infringement.  While Vogel's additional allegation of deception altered the scope of his claim, the nature of the state law claim remained identical to a claim under federal copyright law by virtue of the elements required by the state law claim.  Moreover, the court lacked jurisdiction over Trojanowski (a Pennsylvania resident), as Vogel's claims did not arise out of activities in North Carolina that could be attributed to Trojanowski.  Indeed, Vogel incorrectly attributed WKH's conduct to Trojanowski in an attempt to assert jurisdiction.  Top


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