Welcome to Gordon & Rees's Intellectual Property Newsletter. On a periodic basis we will provide important information about the latest legal developments in the ever-changing realm of intellectual property.
|TABLE OF CONTENTS|
|I. Posner Elevates Patent Damages to the Forefront of the Smartphone Wars|
Apple Inc. v. Motorola Inc. (Case No. 1:11-cv-08540)
The global patent wars over smartphones and their underlying technologies have been widely publicized in the last several years, so widely that the term “patent troll” is now etched into the public’s lexicon. The exorbitant cost of smartphone patent litigation cases, compounded by the sheer number of cases filed each year, has also been highlighted as an abuse of the legal system by technology companies.
On June 22nd, the esteemed Judge Richard Posner rocked the landscape of smartphone patent litigation by dismissing a lawsuit in which Apple and Motorola Mobility (owned by Google, Inc.) had accused each other of patent infringement. Judge Posner’s rationale centered on the finding that neither litigant had sufficiently shown that it was entitled to patent damages or an injunction, despite extensive testimony from both sides’ damages experts. The decision, if affirmed by the Federal Circuit, is expected to significantly change the approach to proving damages in patent litigation cases, both in federal courts as well as at the U.S. International Trade Commission (ITC).
As mentioned above, the decision in Apple Inc. v. Motorola Inc. carries with it serious implications that will likely alter the way patent litigation is conducted in the United States going forward. Judge Posner’s order dismissing the case with prejudice, because neither party in his opinion had provided sufficient evidence proving damages or justifying an injunction, sends a clear message to future litigants that damages should be established “with tolerable certainty.”
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|II. Evidence of Consumer and Non-Consumer Confusion Precludes Summary Judgment|
Rearden LLC v. Rearden Commerce, Inc.
The Ninth Circuit vacated the order of the United States District Court for the Northern District of California granting summary judgment in favor of defendant Rearden Commerce, Inc. (“Rearden Commerce”) and remanded the matter for further proceedings, in part, on the grounds that a genuine issue of material fact existed as to both the “use in commerce” and “likelihood of confusion” issues in a trademark infringement and cybersquatting action.
Plaintiffs Rearden LLC, Rearden Productions LLC, Rearden Studios LLC, Rearden, Inc. and Rearden Properties, LLC (the “Rearden Companies”) are several companies founded by Steve Pearlman as early as 1999 and named, in part, after “Hank Rearden” the main character in the novel Atlas Shrugged by Ayn Rand. The Rearden Companies are technology incubators and artistic production companies that provide resources and support for the ground up development of start up ventures. Some of the Rearden Companies also specialize in movie production and property management.
On April 30, 2002, the Rearden Companies registered with the Patent and Trademark Office (“PTO”) the marks “Rearden Studios” and “Rearden Studios” with a blue and black logo featuring an Amazon warrior figure. Registration of the marks was obtained on November 1, 2005. The Rearden Companies also filed intent to use applications for several marks bearing the name “Rearden” on May 31, 2007.
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|III. Deep Product Discounts May Constitute Product Disparagement|
In Travelers Property Casualty Company of America v. Charlotte Russe Holding, Inc., et al., Case No. B232771 (Cal. App. July 13, 2012), the Second Appellate District of the California Court of Appeal held that the elements of a trade libel claim need not be expressly pled in order to trigger coverage for product disparagement under the personal liability provision of a general commercial liability policy.
In Travelers, plaintiff and respondent Travelers Property Casualty Company of America (“Travelers”), filed an action for declaratory relief, seeking a determination that there was no potential coverage, and therefore no duty to defend, for claims asserted by clothing distributor, Versatile Entertainment Inc. and its parent, People’s Liberation, Inc. (collectively, “Versatile”), against Travelers’ insureds, clothing retailer Charlotte Russe Holding, Inc. and other related companies and individuals (collectively, “Charlotte Russe”).
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|IV. Getting to Know Our IP Attorneys|
Gregory Bennett is an associate in the firm's Intellectual Property practice group. Drawing upon his varied experience from engineering to music, Mr. Bennett possesses a unique perspective and versatility in various intellectual property concerns. He assists clients around the globe in securing, exploiting, and enforcing new and existing trademarks, ensuring identity protection and brand integrity. He also has a burgeoning patent practice, preparing and prosecuting domestic and foreign-origin patent applications, specializing in mechanical devices and design patents.
Mr. Bennett has also developed and implements an effective anti-counterfeiting practice. Beginning by securing a broad intellectual property portfolio with counterfeiting in mind at the outset, he coordinates with U.S. Customs regarding recordation of trademarks and copyrights, seizures of infringing goods, and criminal prosecutions, and develops and applies strategies for policing domestic and foreign websites for sale of counterfeit goods.
Mr. Bennett received his Juris Doctor degree, cum laude, from Ave Maria School of Law, and a Bachelor of Music degree, with honors, in Piano Performance from Towson University. While in law school, he served on the Executive Board of the Ave Maria Law Review and received various moot court awards. Prior to entering the practice of law, Mr. Bennett was a design engineer, developing automation machinery and performance parts for race cars. He is a classical pianist, amateur gearhead, and Brazilian jiu-jitsu tyro.
The IP Group assists clients in identifying, securing, asserting and defending all aspects of IP rights at home and abroad. Our attorneys can also conduct IP audits and provide advice and counseling for strategies to maximize IP assets. In addition to the traditional IP components of patents, trademark and trade dress, and copyright, Gordon & Rees's Intellectual Property Group is expert in trade secrets, internet-related issues, rights of privacy, and issues of unfair competition and antitrust as well as regulatory compliance. Our attorneys are also highly experienced at negotiating and drafting development agreements, licenses, distribution, joint venture, strategic alliance, and vendor services agreements, and have extensive experience crafting and implementing cost-efficient enforcement programs to protect IP rights including seizures, injunctions, anti-counterfeiting and gray market enforcement. Click here to meet our lawyers.