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Intellectual Property Notes 12/06/2022
Patent Summaries    Trademark Summaries   False Advertising Summaries
Copyright Summaries


Headlines

Patent Cases:
Fed Cir - Trial court did not err in striking expert testimony.
Trademark Cases:

11th Cir - Series title had artistic relevance to its content.
ND Tex - A likelihood of confusion clearly existed here.
False Advertising Cases:

SD Ohio - Causal chain rested on a reed too slender.
Copyright Cases:

ND Cal - Works at issue were not substantially similar.  Top


Patent Cases

Fed Cir - Trial court did not err in striking expert testimony.
Treehouse Avatar LLC v. Valve Corp. (11/30/22)  Full Summary  Decision
After striking parts of Treehouse's expert report, the trial court granted summary judgment of noninfringement for Valve; the Federal Circuit affirmed. The trial court did not abuse its discretion in striking portions of Friedman's report, as that report undisputedly applied the plain and ordinary meaning of the limitation at issue and not the parties' agreed-upon construction. Further, as a result of the trial court properly striking portions of Friedman's testimony, Treehouse did not provide admissible evidence to support that the accused videogames satisfied the limitation. On the other hand, Valve provided significant evidence that its servers did not satisfy the involved limitation. For example, Valve's expert analyzed the source code of the games and conducted tests, the results of which showed that the user's own software and hardware presented the game.  
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Trademark Cases

11th Cir - Series title had artistic relevance to its content.
MGFB Properties, Inc. v. 495 Productions (11/29/22)  Full Summary Decision
The trial court granted summary judgment in favor of 495 and the 11th Circuit affirmed. The relationship between the series title and the series content itself was well above the artistic relevance threshold. "Floribama" described the subculture profiled in the series and the geographic area exemplified by the subculture. That term gave viewers a very distinct sense of what part of the country and subculture the series was about. Moreover, the series title did not explicitly mislead as to the source or content of the work. There was simply no evidence that 495 held the series out as endorsed or sponsored by MGFB, nor did it explicitly state that the series was affiliated with MGFB. To the contrary, the title included the "MTV" house mark and the name of an iconic franchise ("Shore"). Thus, 495's use of "Floribama" in its television series title ("MTV Floribama Shore") did not violate the Lanham Act as a matter of law.

ND Tex - A likelihood of confusion clearly existed here.
TotalCare Healthcare Services v. TotalMD (11/29/22)  Full Summary  Decision
The court granted TCH's motion for a preliminary injunction. In the court's view, the "TotalCare" mark was suggestive. TotalMD did not dispute that TCH was the senior user of the mark in most counties at issue. Regarding the likelihood of confusion, the parties' marks were similar in terms of sound, appearance, and meaning. While TotalMD used green and white lettering, the format was substantially the same, with "TotalCare" showcased above the descriptor "Primary Care." Family medicine and primary care were different words for essentially the same service. Both parties had the same market and demographics. In addition, the parties used some of the same marketing channels. However, there was no evidence of bad faith intent by TotalMD. While the proof of actual confusion was sparse, it was enough. Overall, a likelihood of confusion existed here.  Top

False Advertising Cases

SD Ohio - Causal chain rested on a reed too slender.
McNeil v. Mount Carmel Health System (11/29/22)  Full Summary  Decision
The court granted in part Mount's summary judgment motion and remanded McNeil's state law claims. McNeil and the other plaintiffs fell within the zone of interests necessary to bring a false advertising claim under the Lanham Act. However, it was clear that McNeil wished to stretch causation beyond the first step of the causal chain. That causal chain rested on a reed too slender. The uncontroverted record painted a picture in which numerous parties made numerous public statements concerning Husel, making it impossible to trace a straight line from Mount's statements to the media to the employment decisions of McNeil's prospective employers. McNeil failed to explain why Mount's statements, rather than the plethora of other attention-grabbing public statements, determined the hiring decisions of McNeil's prospective employers. Those prospective employers exercised independent judgment when they decided not to employ McNeil.  
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Copyright Cases

ND Cal - Works at issue were not substantially similar.
Whitehead v. Netflix, Inc. (11/30/22)  Full Summary Decision
The court granted Netflix's motion to dismiss for failure to state a claim. Whitehead had not alleged wide dissemination of her work and thus, had not sufficiently alleged access. In addition, Whitehead had not plausibly alleged that her novel and the Netflix series shared similarities probative of copying. The plots of the two works were incredibly different. At a high level, Whitehead's novel was a coming-of-age story that followed the life of a black teenager from high school until adulthood. The Netflix series followed the lives of eight members of a black family, with much of the show centering around the culture shock experienced by the family after a move from Seattle to a smaller city in Georgia. The similarities between the plots of the parties' works were more superficial than substantial, where any similarity existed at all. Although they shared subplots involving interracial relationships, such general storylines were not protected.  Top


Treehouse Avatar v. Valve (Fed Cir 11/30/22)  Decision Short Summary
Treehouse sued Valve for patent infringement.
After striking parts of Treehouse's expert report, the trial court granted summary judgment of noninfringement for Valve; the Federal Circuit affirmed.

Treehouse holds the '858 patent, which claims a method of collecting data from an information network in response to user choices of a plurality of users navigating character-enabled network sites. The issue is the meaning of "character-enabled network sites," which appears in each of the asserted independent claims. Valve offers two videogames accused of infringing. The trial court construed the limitation as meaning a network location, other than a user device, operating under the control of a site program to present a character, object, or scene to a user interface. Treehouse's infringement expert, Friedman, submitted a report that applied the plain and ordinary meaning of the limitation, rather than the agreed-upon construction. On summary judgment, Valve argued that for the accused games to meet the limitation, the user device could not be the network that presented the character, object, or scene to the interface. Zydus, Valve's expert, testified that the program's large size was proof that the downloaded game software resided on the user's computer.

The trial court did not abuse its discretion in striking portions of Friedman's report, as that report undisputedly applied the plain and ordinary meaning of the limitation at issue and not the parties' agreed-upon construction. In fact, Friedman did not even acknowledge or recite the trial court's construction of the limitation in his report. As a result of the trial court properly striking portions of Friedman's testimony, Treehouse did not provide admissible evidence to support that the accused videogames satisfied the limitation. On the other hand, Valve provided significant evidence that its servers did not satisfy the involved limitation. For example, Zydus analyzed the source code of the games and conducted tests, the results of which showed that the user's own software and hardware presented the game. In the absence of Friedman's testimony, Treehouse had not presented evidence that created a genuine issue of material fact regarding infringement.  Top


MGFB v. 495 Productions (11th Cir 11/29/22)  Decision Short Summary
MGFB, Flora-Bama Management LLC, and Flora-Bama Old S.A.L.T.S., Inc. (collectively "MGFB") sued Viacom, Inc., 495, ViacomCBS, Inc., and others (all but Viacom referred to collectively as "495") for trademark infringement. The trial court granted summary judgment in favor of 495 and the 11th Circuit affirmed.

MGFB owns and operates the Flora-Bama Lounge on the Florida-Alabama border. That business has been in operation since 1964 and has gained regional fame by hosting entertainment and athletic events. MGFB holds registrations for the "Flora-Bama" mark. That mark has been featured in artistic works by third-parties, including songs and books. In addition, the business has been featured in news segments. ViacomCBS and 495 create and distribute television programs, including the hit series "Jersey Shore" and its spin-off "MTV Floribama Shore." The latter series is set in Panama City, which is over one hundred miles east of MGFB's lounge. Prior to the show's premiere, MGFB sent 495 a cease and desist letter. Despite this, the series began airing in November 2017.

The relationship between the series title and the series content itself was well above the artistic relevance threshold. "Floribama" described the subculture profiled in the series and the geographic area exemplified by the subculture. That term gave viewers a very distinct sense of what part of the country and subculture the series was about. Therefore, the title was artistically relevant to the underlying work. Moreover, the series title did not explicitly mislead as to the source or content of the work. There was simply no evidence that 495 held the series out as endorsed or sponsored by MGFB, nor did it explicitly state that the series was affiliated with MGFB. To the contrary, the title included the "MTV" house mark and the name of an iconic franchise ("Shore"). MGFB's reliance on survey data was unavailing. Of the 300 people surveyed, 34 percent had heard of the term "Flora-bama," with half of that 34 percent identifying it as the lounge. The 11th Circuit rejected this evidence because any misunderstanding represented by the survey data was not engendered by any overt claim. Thus, 495's use of "Floribama" in its television series title ("MTV Floribama Shore") did not violate the Lanham Act as a matter of law.  Top


TotalCare v. TotalMD, LLC (ND Tex 11/29/22)  Decision Short Summary
TCH sued TotalMD for trademark infringement and related claims; the court granted TCH's motion for a preliminary injunction.

In 2008, TCH began using the mark "TotalCare" in the Dallas-Forth Worth area. TCH is a family medicine and emergency care facility. Ten years later, TotalMD, an urgent care facility, began using the term "TotalCare" for its business in the Austin, Texas area. In 2021, TotalMD opened a facility located on the same street as one of TCH's facilities. TCH seeks to enjoin TotalMD's use of the "TotalCare" mark in specific markets in various North Texas counties.

In the court's view, the "TotalCare" mark was suggestive and entitled to protection. Without TCH's use of descriptive wording after its "TotalCare" mark, it would be difficult to figure out the services it offered. TotalMD did not dispute that TCH was the senior user of the mark in most counties. Regarding the likelihood of confusion, the parties' marks were similar in terms of sound, appearance, and meaning. While TotalMD used green and white lettering and TCH used blue and red lettering, the format was substantially the same, with "TotalCare" showcased above the descriptor "Primary Care." Family medicine and primary care were different words for essentially the same service. Family medicine merely incorporated pediatrics, but offered the same services for adults. That TCH also operated an emergency room did not detract from the similarity in services. Both parties were on the front lines of the medical care industry. Both parties had the same market and demographics. In addition, the parties used some of the same marketing channels, including social media and in-person events. However, there was no evidence of bad faith intent by TotalMD. While the evidence of actual confusion was sparse, it was sufficient. Great care would be exercised by consumers looking for medical care. In fact, medical care was likely the most sensitive and important field in which consumers made choices. Overall, a likelihood of confusion existed here. Irreparable harm also existed, as TCH was harmed in its ability to control its goodwill and reputation.  Top


McNeil v. Mount Carmel (SD Ohio 11/29/22)  Decision Short Summary
McNeil, Romine, Wright, and others (collectively "McNeil") sued Mount, Trinity Health Corp., and Lamb (collectively "Mount") for false advertising and other claims. The court granted in part Mount's summary judgment motion and remanded McNeil's state law claims.

Husel, previously a licensed medical doctor, was terminated from his employment with Mount after it was discovered that he had hastened the deaths of several terminally ill patients with large doses of pain medication. Husel eventually lost his medical license and was criminally prosecuted. Plaintiffs are nine individuals previously employed by Mount (eight as nurses and one as a pharmacist) and who worked with Husel. The complaint alleges that Mount and its parent company, Trinity, engaged in a false advertising campaign aimed at convincing the public that Husel's criminal acts were aided by plaintiffs. This campaign allegedly smeared plaintiffs' reputations both professionally and within their communities, resulting in diminished employment prospects. While Mount was investigating, it placed several employees on administrative leave; that group included plaintiffs. Several of the employees placed on leave were later terminated. During the relevant timeframe, numerous entities besides Mount released public statements, including the media and law enforcement. Following their termination, none of the plaintiffs were able to find comparable employment.

McNeil and the other plaintiffs fell within the zone of interests necessary to bring a false advertising claim. However, it was clear that McNeil wished to stretch causation beyond the first step of the causal chain. That causal chain rested on a reed too slender. The record painted a picture in which numerous parties made several public statements about Husel, making it impossible to trace a straight line from Mount's statements to the media to the employment decisions of McNeil's prospective employers. On top of the articles that vilified Husel and those who assisted him, the Ohio Attorney General publicly declared Husel a serial killer and the Stated Medical Board of Ohio asserted that Husel's continued practice would endanger the public. Dozens of Husel's former patients filed medical malpractice suits and issued statements to the media. All of these statements garnered the public's attention. McNeil failed to explain why Mount's statements, rather than the plethora of other attention-grabbing statements, determined the hiring decisions of McNeil's prospective employers. Those prospective employers exercised independent judgment when they decided not to hire plaintiffs. While each struggled to find work following their termination, not one offered anything more than a conclusory allegation linking Mount's statements to the media to their inability to find similar employment. Plaintiffs had failed to show that their reputational injuries flowed directly from Mount's alleged false advertising.  Top


Whitehead v. Netflix, Inc. (ND Cal 11/30/22)  Decision Short Summary
Whitehead sued Netflix, Mega-Diva, Inc., Hartle, and others (collectively "Netflix") for copyright infringement and related claims. The court granted Netflix's motion to dismiss for failure to state a claim.

In 2015, Whitehead authored the novel "No Fairy Tales" and published it using Amazon's online self-publishing services. Whitehead secured a registered copyright for her novel in 2021. Defendants are the creators and distributors of "Family Reunion," a television series first released in July 2019 on Netflix's streaming service. Whitehead claims that Netflix's series is a derivative work of her novel. Whitehead's novel follows the life of Jade Valentine from the time she is in high school to adulthood. This coming-of-age story focuses, at least in part, on Jade's relationship with Tony. Their relationship is controversial because Jade is black and Tony is white. After experiencing financial issues, as well as violence from a different boyfriend, Jade becomes a renowned violinist. The Netflix series is a sitcom set in Georgia that follows a black family, which includes a teenage daughter named Jade who has a crush on a white boy during one episode.

Whitehead had not alleged wide dissemination of her work and thus, had not sufficiently alleged access. Whitehead had not alleged how many copies of her novel had sold, thereby alleging only a bare possibility that Netflix had access to it. In addition, Whitehead had not plausibly alleged that her novel and the Netflix series shared similarities probative of copying. The plots of the two works were incredibly different. At a high level, Whitehead's novel was a coming-of-age story that followed the life of a black teenager from high school until adulthood. The first part of the novel focused on Jade's relationship with Tony and her attempts to secure a violin scholarship. The rest of the book focused on Jade's struggles to adapt to college life and her later transformation into a successful violinist. The Netflix series followed the lives of eight members of a black family, with much of the show centering around the culture shock experienced by the family after a move from Seattle to a smaller city in Georgia. Both works featured storylines involving a black teenage girl named Jade who experienced criticism for her interest in a white boy. That storyline was a major focus of the novel, but was only a one-episode story in the series. The similarities between the plots of the parties' works were more superficial than substantial, where any similarity existed at all. Although they shared subplots involving interracial relationships, such general storylines were not protected; any similarities they shared flowed naturally from that topic.

The two Jade characters were not substantially similar. In the novel, Jade Valentine was depicted as a mature but lovestruck teenager living with her single mother and younger siblings in Chicago. In the series, Jade McKellan was depicted as a black teenage girl, eager to grow up, living with her successful parents, three younger siblings, and grandparents. The novel's main character experienced serious poverty, while Jade McKellan lived a comfortable life, notwithstanding her family's financial concerns. Whitehead portrayed her main character as crass and promiscuous, while the Jade shown in the series never swore and had not yet engaged in sexual activity. The works were also not substantially similar in terms of dialogue. The only similarity was both works' use of the term "swirl" to refer to interracial couples. Finally, the works were not substantially similar in terms of theme. The overarching themes of the series revolved around family, while the main theme of the novel was about the loss of one's true love.  Top


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