May 26, 2009 by thomason.

May celebrates Historic Preservation month, http://www.preservationnation.org/take-action/preservation-month/. Those who have contributed to the preservation and adaptation of historic places in America are celebrated by The National Trust for Historic Preservation, as well as by local bodies.  16 U.S.C. §470a.

Tonight I am excited to accept an award in the category of best adaptive use of an existing structure from the local Historic Review Board.  My renovation of an ugly duckling building, restoring its original curved corners, and upgrading it with an Art Deco facade and interior, was like IP - fun, but challenging.

Attorneys, who fill in many spaces in downtowns and renovate existing structures, have done as much as any group to contribute to historic preservation and revival.  So, give yourselves a pat on the back, and invite your community to visit that office which gives pride to your profession.

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May 22, 2009 by thomason.

Alas, the sphere of copyright protected musical works is too often penetrated by pirates, and if Gilbert & Sullivan still could craft a tune, they’d bemoan that what’s been gained is now often lost. This fine, and hallowed, Memorial Day weekend, will include some time listening to some faves on the radio or media player, which was the notion that lent some interest to yesterday’s contempt ruling against an unauthorized distributor of contemporary works.

Among the hits that provoked the Court to consider the case were “Hypnotized,” “Freaky Gurl Remix,” and “Chillin With My B* * * *.” It was not Jung or Freud that observed: ‘know another by what he will steal.’

The first line of defense was improper venue. The defense wanted to a venue change, which could have raised questions under 28 U.S.C. §1400(a) of where that Freaky Gurl may be “found” or was Hyponotized or was Chillin. Transfer was denied.

Defendants earlier had consented to an injunction, but were alleged to have acted contemptously by later distributing hits that included “Dip Slide” by T.I., and “B* * * * * * Ain’t Sh*t” by Attitude. Surely, anyone with the credentials needed to ascend the federal bench would be prepared to address the degree of “substantial similarity” between rap songs, er.. tunes, (?) works…

Contempt was found, and the sanction was for the infringer to “disgorge a percentage of the profits derived from that album equal to the infringing song’s proportionate share of the total number of songs on the album.”

There just are things that deserve the protective sword of copyright.

Atlantic Recording Corp. v. BCD Music Group, Inc., 2009 WL 1390848 (S.D.N.Y. 2009).

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May 20, 2009 by thomason.

Rulings on counsel fee motions give some idea of what IP litigators charge, as well as how much courts are willing to award, for New York minutes.

Reduced fees were awarded in a ruling yesterday in a case over “patterns, fabrics and color schemes that are identical or virtually identical to the patterns, fabrics and color schemes featured in the copyrighted Anthropologie Garments.” The Magistrate noted first that the attorneys “charged discounted hourly rates ranging from $540.00 for a senior partner to $380.00 for a senior associate,” and that the party in opposition did “not quarrel with the hourly rates charged.” The disagreement was over the number of hours spent on some discovery disputes.

In one instance, the court cut the fee request for a “brief telephone scheduling conference,” deeming the “hours of time spent by three lawyers in preparing for and participating in the conference,” an approach that ”seem[ed] like overkill from a billing perspective.” On a later topic, the court assayed certain motion practice to have required nothing more than “plain vanilla” responses {hear the cost cutter starting to turn}. The “hourly rates charged bespeak considerable experience and skill on the part of plaintiff’s counsel, which should yield efficiencies that are simply not very evident from the submitted time records [and], the use of six attorneys for what is (or should have been) a fairly straightforward motion to compel bespeaks a level of overstaffing that should not be rewarded.”

The whole business of seeking and justifying attorney fee awards may be no different that the general proposition of pleading for more than you think will be awarded, and so, getting more or less the amount that you expect to recover. Anthropologie, Inc. v. Forever 21, Inc., 2009 WL 1383605 (S.D.N.Y. 2009).

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May 19, 2009 by thomason.

Guess what color is a registered trademark of Wham-O for water slide toys?

The answer is in the Ninth Circuit’s affirmance Friday of a verdict finding willful infringement of the color yellow. 2009 WL 1360963. Wham-O was able to preclude testimony by the infringer’s expert on the topic of the “competitive advantages offered by use of the color yellow,” but hey, that was harmless.

Wham-O prevailed against a defense of functionality - that color keeps you from diving into the yard - using the testimony of “its employees” that yellow is not the “only color that stands out against green grass or evokes the appropriate aesthetic response.” True, once you miss diving into the grass and hit the slide, you can work the aesthetics of your slide moves, e.g., the gator, the torpedo, the flivver, the gargoyle, the OK-Dad-let-the-kids-have-a-turn, etc.

Let the yellow be a lesson -  the color of plastic may be the color of money.

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May 19, 2009 by thomason.

The D.C. Circuit has affirmed the ruling that laches bars Native Americans claim of disparagement by the use of the mark “Washington Redskins.” 2009 WL 1350607.

It took only from 1992 until 5/15/09 to reach that issue. What threshold prejudice was there in the time that passed from registration of the mark, in 1967, up to the time of the cancellation proceeding? The death of Edward Bennett Williams, who was the pater familias of the Redskins’ football franchise. It was claimed that Williams, the founder of Williams & Connolly, had met with Native American leaders to hear their views on registration of the trademark. There too was economic prejudice since during the delay, the team had invested heavily in branding and merchandising the Washington Redskins, e.g., Sonny J. and Billy the Kid jerseys.

There was, however, the closing question of disparagment by the 1990 registration of “The Redskinettes,” and the concomitantly shorter 29-month delay in complaining about that. Dismissing the claim against the “Redskins” was sauce for gander, and so, good enough to goose the Redskinettes’ claim.

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May 15, 2009 by thomason.

If you’ve been to Delphi, and stood at the ruins of Oracle, looking off toward the valley, wondering whether it lies at the line between the cosmological, the meta- and the physical, hinged over a sorcerer’s stone, and not far from the touristical, then you must’ve been experiencing a lot of demestica on that trip.  None of some of the mysteries at the Oracle of Delphi have been recreated at the Oracle of Silicon Valley, but still, there is there some thirst for the unknown.

Oracle entrepreneur and yachtsman Larry Ellison had his name invoked in a court proceeding, reported out of NYC, in which the Master & Commander of the Alinghi team alleges that a spy, (allegedly) from Adm. Ellison’s yacht team, tried “to illegally break into facilities to take photographs and secure information” about the design of the vessel that the Alinghi team will enter in the 2011 America’s Cup.  The interloper was arrested after Alinghi employees saw him scouting around and photographing in the area where they are building their vessel.

Do boat-builders have common law IP rights; or, did Justice S.D. O’Connor rule those out in Bonito Boats?  Perhaps the billionaires, who plan to challenge for the America’s Cup, have their own take on J. O’Connor’s remark that our laws embody a “recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.”

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May 15, 2009 by thomason.

How many roads must a patentee go down, before he can see the sky?  The patentee wishes to invest in plowshares, but those infringers divert some of the budget to swords.  Then, at the reckoning, what is gained.

Passages from two recent decisions that deny post-judgment recoupment remind us that when the fire burns out, there may be nothing to carry away.

In Star Navigation Systems Group, Ltd. v. Aeromechanical Services Ltd., 2009 WL 1313208 (N.D.Cal. 2009), the accused infringer’s motion was denied after the plaintiff-patentee voluntarily dismissed the case.  A “press release issued after Star voluntarily dismissed [explaining] that Star dismissed the action after concluding any award of damages it might obtain would be outweighed by the costs it would incur in prosecuting the matter” did not prove that Star had prosecuted the suit in bad faith.

Also denied was a post-judgment motion for attorneys fees, after a jury ruling, a JMOL, and a CAFC reversal, in Sundance, Inc. v. De Monte Fabricating, Ltd., 2009 WL 1324901 (E.D.Mich. 2009).  The Hon. Avern Cohn, who has seen a lot in 30 years on the federal bench, noted all of the hoops that the patentee had hurdled, before the CAFC ruled de novo and declared invalidity ab initio.  “The ′109 patent was not only duly granted; it was thrice examined. That the Court and three (3) patent examiners got it wrong in the view of the Federal Circuit does not make this an exceptional case.”

A variety of reasons suggest why the Patent Act needs to be reformed, but the gauntlet that the CAFC requires be run before a final decision can be reached, is a good one.

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May 14, 2009 by thomason.

As the mid-point of 2009 approaches, I hope to get re-grounded in that somewhat worthwhile pursuit of blawging.  As the year began, I had the pleasure of being the guest blawgger on techlawforum.net.  Doesn’t look like anyone picked up that gig after I left it.  Next, I served at the pleasure of my alma mater as an adjunct professor of IP law.  That too was a most worthwhile pursuit, but I should wait until I turn in my grades before calling it a wrap.

What then?  Sure, I’ll get back to posting about the latest cases, even though it’s my sneaking suspicion that the CAFC judges are not taking heed of my insights.

The patent landscape seems to be going from greened-up to a whiter shade of desolation.  Without the Patent Act being revised, decisions and protections will hinge on the ‘yet to be set contours’ of the Festo, KSR, and Bilski rulings.  Having a branch of government, other than the legislative, exercising the power to “promote the Progress of Science and the Useful Arts by securing” IP rights to America’s “Authors and Inventors,” is not what the framers had planned.

It just what we blawgers do. 

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