Patent Law

David M. Duree has more than 40 years experience in handling cases involving Intellectual Property issues. With offices in St. Louis, Mo. and O’Fallon, Ill., he also handles cases in numerous other states.

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Law updates about Copyright infringement law, Trademark cancellation law, Copyright law, Trademark law, Internet property law, Domain name law, Intellectual Property Law, Trademark infringement law, The Lanham act and Trade Secret misappropriation. Internet Attorney.

These materials are in reverse chronological order. New material is added at the top. Older material is inserted in the correct chronological spot. Overruled, modified and/or obsolete material is deleted, revised, consolidated and/or moved, when appropriate. Citations preceded by <>are linked to the complete court opinion. (NOTE: Some linked court sites are not always available).

Six freelance writers brought claims under copyright infringement law against several print publishers including the New York Times, News Day and Time, as well as several electronic publishers. The plaintiffs alleged their copyrights were infringed when the print publishers licensed their publications (which incorporated individual articles in which the freelance writers owned copyrights) to the electronic publishers. The print publishers argued that because they owned the copyright in their respective compilations (the individual daily and weekly editions of their publications) they were “privileged” to license their compilations to the electronic publishers, who made them available to online subscribers. The District Court granted the defendants’ Motion for Summary Judgment. The Second Circuit reversed, holding that electronic and CD-ROM databases containing individual articles from multiple editions of periodicals did not constitute “revisions” of individual periodical issues within the meaning of the Copyright Act provision governing collective works, and that the print publishers were not entitled to relicense an article of the original authors, which had express licensing agreements with the print publishers prohibiting republication without consent. <>Tasini v. The New York Times Company, Inc., 206 F. 3d 161 (2nd Cir. 2000)

The Driver’s Privacy Protection Act, 18 U.S.C. § 2721 et seq., is constitutional as a proper exercise of Congress’ authority to regulate interstate commerce under the commerce clause and does not violate the principles of federalism contained in the 10th Amendment. The Driver’s Privacy Protection Act restricts the ability of the states to disclose a driver’s personal information without the driver’s consent. <>Reno v. Condon, ____ U.S. ______, 120 S. Ct. 666, (2000)

A verdict of $8,000,000 compensatory damages and $135,000,000 punitive damages was set aside and a new trial ordered by the trial court because of attorney misconduct, in a trademark infringement case. The court had sustained 778 objections by the defendant to plaintiff’s evidence, and the court itself interposed 67 additional objections. This created the appearance that the court and the “large” defendant were conspiring to conceal evidence offered by the “small” plaintiff. As a result a new trial was required. The court also found that the California state courts would not recognize the common law tort of unfair competition by reverse confusion where the parties were not in competition in the same market. Forward confusion occurs when the consumer might believe the junior user’s product is that of the senior user, i.e. the defendant “palms off” its product as that of the senior user (trademark holder). Reverse confusion occurs when the consumer believes the products of the senior user (small company-trademark holder) are actually the products of the junior user (large company-infringer). This usually occurs when the infringer is much larger and more well known than the trademark holder. <>Dreamwerks Production Group,Inc v. SKG Studio, dba DreamWorks SKG, 142 F.3d 1127 (9th Cir. 1998). Since plaintiff’s state common law claims fail, its claims for punitive damages must also fail because punitive damages are not recoverable under the Federal Trademark (Lanham) Act, 15 U.S.C. 1052, 1117 et seq. The court also found that plaintiff’s claims for statutory trademark infringement could not exceed $500,000 as a matter of law. An Appeal by Trovan to the 9th Circuit is pending. Trovan, Ltd. v. Pfizer, Inc. ___F.Supp.2d ___, 2000 WL 709149 (C.D. Cal. 5-24-2000)

An entertainment-industry information provider was entitled to an injunction against a video rental store chain where the provider was the senior user of the “MovieBuff” trademark. The video chain could not use the term “” on its web domain as a result of its earlier use of the trademark “The MovieBuff’s Movie Store.” Use of the “” domain name would create likelihood of confusion which is actionable under the Lanham act. <>Brookfield Communications, Inc. v. West Coast Entertainment Corporation, 174 F. 3d 1036 (9th Cir. 1999)

Federal circuit review of administrative decisions from the Patent and Trademark Office is under the more deferential “substantial evidence” standard of the Administrative Procedure Act instead of the “clearly erroneous” standard under Fed. R. Civ. P. 52(a)<>Dickinson v. Zurko, 527 U.S. 150 (1999)

Private businesses acting under clearly articulated government programs or providing quasi-governmental functions, are not liable for violating antitrust laws. Network Solutions, Inc. is a private company that registers internet domain names, under domain name law, under a contract with national science foundation, an independent agency of the United States Government that supports the development of the world wide web and facilitates its use. In this capacity, Network Solutions Inc. may not be found liable for violating internet property law. Domain names are not free speech protected by the First Amendment or by domain name law. Beverly v. Network Solutions, Inc., 49 U.S.P.Q. 2d 1567 (N.D. Cal. No. C-98-0337-VRW 1998); Thomas v. Network Solutions, Inc. and National Science Foundation, 2 F. Supp. 2d 22 (D.D.C. 1998); PGMedia v. Network Solutions, Inc. and National Science Foundation, 51 F. Supp. 2d 389 (S.D.N.Y. 1999)

The copying of anticopying computer software for the purpose of designing a program to defeat the anticopying software program did not violate the copyright of the producer of the anticopying software, under the Computer Software Copyright Act of 1980, 17 U.S.C. § 117, did not constitute contributory infringement and did not violate the Louisiana Software License Enforcement Act. Vault Corporation v. Quaid Software Limited, 847 F. 2d 255 (5th Cir. 1988);<>Ringgold v. Black Entertainment Television, Inc., 126 F. 3d 70, 150 A.L.R. Fed. 813 (2nd Cir. 1997); <>Alcatel USA, Inc. v. DGI Technologies, Inc. v. DGI Technologies, Inc., 166 F. 3d 772 (5th Cir. 1999)

35 U.S.C. § 102 (b) bars a patent when the subject matter of the invention was placed on sale in this country more than a year before the patent application was filed. The one-year period begins once the invention is “ready for patenting”. This new standard has resulted in a more strict application of the one-year on-sale bar rule.<>Pfaff v. Wells Electronics, Inc., U.S. , 119 S. Ct. 304, (1998); <>Abbott Laboratories v. Geneva Pharmaceuticals, Inc. 182 F. 3d 1315 (Fed. Cir. 1999); <>Brasseler U.S.A. L.L.P. v. Stryken Sales Corp., 182 F. 3d 888 (Fed. Cir. 1999); Stx Inc. v. Brine, Inc., 37 F. Supp. 2d 740 (D. Md. 1999)

Patent Law, Common Law Trademarks, Trademark Dilution Law, Trade Secrets Law, Unfair Competition Law, Forward Trademark Confusion, Reverse Trademark Confusion, Patent Infringement Law.

The Tenth Circuit recently overturned privacy regulations of the Federal Communications Commission which limited the ability of telephone companies to use information about individuals’ calling patterns for marketing purposes. <>U.S. West, Inc., v. Federal Communications Commission, 182 F. 3d 1224 (10th Cir. 1999)

The Ninth Circuit held, in deciding a claim of trademark dilution, that the trademarks “Avery” and “Dennison”, while well-known trademarks, did not rise to the level of “famous” trademarks deserving increased protection under the Federal Trademark Dilution Act, noting that they are also surnames and similar marks are used by third parties. Only truly prominent, not merely distinctive, trademarks deserve dilution protection. Summary Judgment in favor of Avery Dennison reversed. The defendant had registered “” and “” along with thousand of other domain names, under domain name law, incorporating common last names for the purpose of selling them to individuals with those last names. <>Avery Dennison v. Sumpton, 189 F. 3d 868 (9th Cir. 1999)

West Publishing company and Thomson corporation, the third and first largest publishers of law books and legal research materials proposed a merger. The United States and 7 states file an antitrust action to bar the merger. West also owns Westlaw an online legal research service. West also claimed copyright protection for its “Star Pagination” system, which provides for the insertion of numeric symbols in the text of decisions to indicate the equivalent West Reporter page break and page number. Star Pagination permits an individual to rely on a printed decision not published by West, while retaining the ability to cite to West’s National Reporter System. After initially disapproving a proposed consent decree to permit the merger, the district court entered a final decree approving the merger, specifically providing that it did not grant confirmation of West’s claims of copyright protection for its Star Pagination System. Subsequently, Matthew Bender & Co. and Hyperlaw, Inc. filed declaratory judgment actions seeking a ruling that sales of CD-ROM disks containing compellations of judicial opinions, including Star Paginations, did not infringe West’s copyrights. The Second Circuit confirmed a New York district court decision holding that West’s Star Pagination System was not entitled to copyright protection because it merely compiled data without contributing sufficient original, creative, material to warrant copyright protection. United States v. Thomson Corp., 949 F. Supp. 907 (D.D.C. 1996); United States v. Thomson Corp., 1997 WL 226233 (D.D.C. 1997);<>Matthew Bender & Co., Inc. and Hyperlaw, Inc. v. West Publishing Co., 158 F. 3d 674 (2nd Cir. 1998);<>Matthew Bender & Co., Inc. and Hyperlaw, Inc. v. West Publishing Co., 158 F. 3d 693 (2nd Cir. 1998)

Patent Law, Common Law Trademarks, Trademark Dilution Law, Trade Secrets Law, Unfair Competition Law, Forward Trademark Confusion, Reverse Trademark Confusion, Patent Infringement Law.

The District Court abused its discretion in failing to approve a consent antitrust decree between the United States and Microsoft under the Tunney Act, 15 U.S.C. § 16 (e). Microsoft had been charged with maintaining a monopoly by requiring original equipment manufacturers to pay Microsoft a royalty for each computer sold, containing a particular microprocessor, whether or not the original equipment manufacturer had included a Microsoft Operating System with that computer. Subsequent antitrust claims regarding Microsoft’s browser are still pending. United States v. Microsoft Corporation, 159 F.R.D. 318 (D.D.C. 1995), reversed, <>56 F. 3d 1448 (D.C. Cir. 1995); United States v. Microsoft Corporation, 980 F. Supp. 537 (D.D.C. 1997), reversed, <>147 F. 3d 935 (D.C. Cir. 1998)

A “squatter” may not secure domain names using well established trademarks and tradenames held by others, then deny use of the domain name to the owner of the trademark. Such use of the domain name infringes the trademark rights of the trademark holder and dilutes the value of the trademark. Panavision Intern, L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996), affirmed,<>141 F. 3d 1316 (9th Cir. 1998); Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998); Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013 (C.D. Cal. 1998)

The concept of the customers’ goodwill in the context of trademark law is the goodwill for the trademark, not the goodwill for a specific restaurant. As a result, a terminated “Roy Rogers” franchisee could not continue to use the trademark, after termination, notwithstanding its contention that the owners of the trademark had mismanaged the operation, resulting in a significant reduction in the number of operating franchisees and damage to the “goodwill” and trademark. The District Court found that the resulting harm to the franchisee, by granting the injunction, would outweigh the harm to the trademark owners if the injunction was not granted. The Court of Appeals reversed, finding the District abused its discretion. A preliminary injunction was entered by the Court of Appeals. <>Pappan Enterprises, Inc. v. Hardee’s Food Systems, Inc. et el., 143 F. 3d 800 (3rd Cir. 1998)

A plaintiff’s failure to designate its trade secret with specificity upon a Court Order to do so, precluded it from later relying on the trade secret to support its misappropriation claim. <>Imax Corp. v. Cinema Technologies, Inc., 152 F. 3d 1161 (9th Cir. 1998)

The Doctrine of Equivalants, established in<>Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) is not inconsistent with the Patent Act, but must be applied to individual elements of the patent claim, not to the invention as a whole. Prosecution History Estoppel does not apply when patent claims have been amended during the application process, regardless of the reasons for the change. The patentee’s addition of lower pH limit during the application process did not necessarily preclude application of the Doctrine of Equivlants as to that element. The Doctrine of Equivlants does not require proof of intent and is not limited to equivalents disclosed within the patent itself . The case was remanded for additional findings of fact, first to the Federal Circuit and then to the District Court.<>Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), on remand, remanded to the District Court, 114 F. 3d 1161 (Fed. Cir. 1997)

A party defamed by a message on a web site, placed there by a third party, could not recover from the internet service provider, America Online, under 47 U.S.C. § 230 which provides immunity to Internet providers and users, under internet property law, for defamatory language placed on the internet by third parties. <> Zeran v. America Online, 129 F. 3d 327 (4th Cir. 1997)

The manufacturer of “Zippo” cigarette lighters could not recover under the Lanham act or under state law against a computer news service which used domain names “” and “” and “” Zippo Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997)

A federal circuit encountered some difficultly in distinguishing issues of fact, to be decided by a jury, from issues of law, to be decided by the court, following the United States Supreme Court Decisions in Markman and Hilton Davis cases, issuing five separate opinions in <>Lough v. Brunswick Corp., 86 F. 3d 1113 (Fed. Cir. 1996), rehearing denied, in banc suggestion declined, 103 F. 3d 1517 (Fed. Cir. 1997)

Actors George Wendt and John Ratzenberg, who played Norm and Cliff in the television show Cheers, brought suit against a Host International, Inc. and Paramount Pictures Corp. which owned the copyrights in the two Cheers characters. Host International created three dimensional robotic figures which were placed in airport bars. The robotic figures were originally modeled to look like the characters from Cheers. After Wendt and Ratzenberg complained, Host modified the robotic figures, claiming they no longer resembled the Cheers characters and changed their name from Norm and Cliff to Bob and Hank. Wendt and Ratzenberger brought suit for violations of their publicity rights and under trademark infringement law. The District Court found that there was no similarity and granted Summary Judgment for the defendants. The Ninth Circuit reversed, finding that material issues of fact remained as to the degree the robots appropriated the likeness of Wendt and Ratzenberger with respect to the plaintiffs’ claims that Host violated their statutory and common law rights of publicity and engaged in unfair competition. <>Wendt v. Host International & Paramount Pictures, 125 F. 3d 806 (9th Cir. 1997)

An employee of Computer Associates accepted employment from a competitor, taking copies of the computer source code for two versions of the ADAPTER operating system, in violation of his employment agreement. Computer Associates filed suit against the competitor alleging claims under copyright infringement law and trade secret misappropriation. The district court found a violation of copyright infringement law, while holding that the federal copyright act preempted the state law claim of trade secret misappropriation. The second circuit reversed on the preemption issue, while affirming the judgment finding a violation of copyright infringement law. On remand, the district court held that texas’ 2 year statute of limitations for of trade secret misappropriation applied, was constitutional and not subject to the “discovery” exception. On appeal the second circuit certified these questions to the Texas Supreme Court which also held that the 2 year statute of limitations applied, was constitutional and not subject to the “discovery” rule. Computer Associates International, Inc. v. Altai, Inc., 775 F. Supp. 544 (E.D.N.Y. 1991), reversed and remanded, 982 F. 2d 693 (2nd Cir. 1992), on remand, 832 F. Supp. 50 (E.D.N.Y. 1993), questions certified to the Texas Supreme Court by the Second Circuit, 22 F. 3d 32 (2nd Cir. 1994); Texas Supreme Court decision , 918 S.W. 2d 453 (1996)

Point and click contracts (executed electronically over the internet) to pay royalties under “shareware” contracts, to refrain from providing unsolicited email (spam) under a web site provider-subscriber contract and to license software under a “shrinkwrap” contract have all been held enforceable, under internet property law.<>CompuServe, Inc., v. Patterson, 89 F. 3d 1257 (6th Cir. 1996); Hotmail Corp., v. Van$ Money Pie, Inc., 47 U.S.P.Q. 2d 1020, 1998 WL 388389 (N.D. Cal. 1998); <>ProCD v. Zeidenberg, 86 F. 3d 1447 (7th Cir. 1996)

Where there is an equal choice between a broader and narrower meaning of a patent claim, and there is an enabling disclosure that indicates that the patent applicant is entitled to a claim having the narrower meaning, the Federal Circuit considers the notice function of the claim to best be served by adopting the narrower meaning. Arbek Manufacturing, Inc. v. Mozzam, 55 F. 3d 1567 (Fed. Cir. 1995); <>Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F. 3d 1573 (Fed. Cir. 1996)

To infringe, the accused device must contain every limitation of the patent claim. <>Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F. 3d 1558 (Fed. Cir. 1996)

Patent infringement actions descended from actions at law. As a result, the 7th Amendment requires a jury trial. The interpretation of patent claims, however, or terms of art, and the construction of a patent, including terms of art are exclusively issues for the court, not a jury. <>Markman v. Westview Instruments, Inc., et.el., 517 U.S. 370 (1996)

Decisions on Motions for Contempt for allegedly violating an injunction are reviewed on an abuse of discretion standard.<>Reliance Ins. Co. v. Mast Constr. Co., 84 F. 3d 372 (10th Cir. 1996)

In 1990 the Copyright Act, 17 U.S.C. 102(a)(5), was amended to specifically protect “pictorial, graphic, or sculptural works,” including technical drawings, architectural plans, diagrams, and models. Engineering drawings are also protected by the act. Guillot-Vogt Associates, Inc. v. Holly & Smith, 848 F.Supp. 682 (E.D. La. 1994); an “architectural work” for purposes of copyright protection is a design as embodied in a tangible medium of expression, including architectural plans or drawings, and includes overall form as well as arrangement and composition of spaces, elements, and design, but does not include individual standard features. CSM Investors, Inc. v. Everest Development Ltd., 840 F.Supp. 1304 (D.Minn. 1994); in order for a designer to be considered the owner of a copyright and thereby protected by the act, the work must be a work “made for hire” under a written agreement or by an employee. Bryce & Polazzola Architects, Inc. v. A.M.E. Group, 865 F.Supp. 401 (E.D.Mich. 1994)

The application of Trademark cancellation law to a fraudulently procured trademark registration is a discretionary matter for the District Court under the Lanham act. 15 U.S.C. § 1052, 1119, 1127. A trademark may not be registered if it consists of a name, portrait, or signature identifying a living person, without the written consent of that person. Other parties, however, may not challenge the registration of a trademark, under trademark infringement law, on the grounds that it includes the name of some other person without permission. Trademark cancellation law may be invoked only by the living person whose identity is included within the trademark. An injunction in favor of the owner of “Houlihan’s” service mark was affirmed and the counterclaim filed by the defendant, competitor, which was using the trade name “Mike Houlihan’s” was dismissed. Gilbert/Robinson, Inc. v. Carrie Beverage-Missouri, Inc., 989 F. 2d 985 (8th Cir. 1993)

The Noerr-Pennington Doctrine. The Noerr-Pennington Doctrine was developed to protect efforts to influence legislative or executive action by the government (by petitioning and/or filing lawsuits) from liability under the antitrust statutes. Litigation or other conduct petitioning the government cannot be the basis for claims of malicious prosecution or abuse of process or the basis for enforcing or establishing a monopoly under the antitrust laws, unless the litigation is sham litigation, i.e. litigation which is objectively baseless.<>Eastern Rail Road President’s Conference v. Noerr Motor Freight, Inc., 365 U.S. 127 (1961); <>United Mine Workers v. Pennington, 381 U.S. 657 (1965); <>California Motor Transport v. Trucking Unlimited, 404 U.S. 508 (1972); Defino v. Civic Center Corp., 780 S.W. 2d 665 (Mo. App. 1989); Oregon Natural Resources Council v. Mohla, 944 F. 2d 531 (9th Cir. 1991); Franchise Realty Interstate Corp. (McDonald’s Affiliate) v. San Francisco Local Joint Executive Board of Culinary Workers, 542 F. 2d 1076 (9th Cir. 1976); <>Whelan v. Abell, 48 F. 3d 1247 (D.C. Cir. 1995); Havoco of America, LTD. v. Hollobow, 702 F. 2d 643 (7th Cir. 1983); <>Professional Real Estate v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993)

A copyrighted computer program is “copied” for purposes of copyright law when the computer program is transferred from a permanent storage device to a computer’s Random Access Memory (RAM). A computer service company which loaded copyrighted software into RAM and was then able to view system errors and diagnose problems with the computer, engaged in copying for copyright infringement purposes and in trade secret misappropriation. MAI Systems Corporation v. Peak Computer, Inc., 991 F. 2d 511 (9th Cir. 1993)

The White Pages of a local telephone utility did not constitute original material sufficiently creative or unique to be copyrighted. An area-wide telephone directory which used material from the local telephone company’s White Pages did not infringe any rights of the local telephone company because the White Pages were not copyrightable. <>Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991)

In patent disputes a company may be sued anywhere it does business. As a result, a large number of patent infringement cases are filed in the United States District Court for the Eastern District of Virginia, in Alexandria, which has a reputation for rapidly moving these cases to trial (known as the “rocket docket”). V.E. Holding Corp. v. Johnson Gas Appliance, 917 F. 2d 1574, (Fed. Cir. 1990).

A franchiser/licensor which licensed the name “Shoney’s” to a franchisee for operation of a restaurant could not license the same trade name “Shoney’s” in the same geographical area to a motel operator, as this additional licensing would violate the contract with the original franchisee/restaurant operator. While the franchisee/licensee could use the name “Shoney’s” only for a restaurant, within the restricted territory, and not a motel, all other parties, including the franchiser/licensor were also precluded from using the name “Shoney’s Inn” for a motel within the exclusive territory. No one could use the name “Shoney’s” in relation to a motel within the restricted territory. Shoney’s, Inc. v. Schoenbaum, 894 F. 2d 92 (4th Cir. 1989)

Unlike the registration of a patent, a trademark registration of itself does not create the underlying right to exclude, under trademark infringement law; nor is a trademark created by registration. The Lanham act and the Common Law protect unregistered trademarks. A Licensee was entitled to attorney’s fees for bad faith where the manufacturer, trademark holder granted an exclusive license for an area in which a previous exclusive license had been granted to another, then filed suit against the licensee. San Juan Products, Inc. v. San Juan Pools of Kansas, Inc., 849 F. 2d 468 (10th Cir. 1988)

Contempt proceedings to enforce injunctions against infringement are available only with respect to devices previously admitted or adjudged to infringe and other devices which are no more than colorably different from the patented device, which clearly are infringements of the patent. Contempt proceedings may not be used as a substitute for a subsequent infringement action against a device different from the infringing device. KSM Fastening Systems v. H.A. Jones Co., 776 F. 2d 1522 (Fed. Cir. 1985)

One of the benefits of the patent system is the “negative incentive” it creates to “design around” a competitor’s products, even when they are patented, thus brining a steady flow of innovations to the market place. State Indus., Inc. v. A.O. Smith Corp., 751 F. 2d 1226 (Fed. Cir. 1985)

Patent Law, Common Law Trademarks, Trademark Dilution Law, Trade Secrets Law, Unfair Competition Law, Forward Trademark Confusion, Reverse Trademark Confusion, Patent Infringement Law.