Ninth Circuit: Copyright Holders Must Consider Fair Use Before Sending DMCA Takedown Notices

The Ninth Circuit held last week in Lenz v. Universal Music Corp. (the “dancing baby” case) that a copyright holder must consider fair use before sending a takedown notice under the Digital Millennium Copyright Act (DMCA). Without first considering fair use, the copyright holder cannot have formed the required subjective good faith belief that the use was infringing. Stephanie Lenz and the Electronic Frontier Foundation sued Universal Music Group in 2007 after Universal sent Lenz a takedown notice for a 29-second video she posted to YouTube of her son dancing to Prince’s “Let’s Go Crazy.” Lenz claimed the video was   Read More »

Posted in Copyright Litigation, IP and Technology Litigation | Tagged , ,

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Laches Remains a Defense to Legal Relief in Patent Infringement Cases After Petrella

Laches remains applicable in the patent context to bar pre-suit damages after an en banc Federal Circuit ruling late last week in SCA Hygiene Products Aktiebolag v. First Quality Baby Products. Last year in the “Raging Bull” decision (Petrella v. Metro-Goldwyn-Mayer), the Supreme Court held that laches could not bar copyright infringement damages within the three year statute of limitations period, because Congress had expressly legislated on the timeliness of copyright claims when it created a statute of limitations. Under Federal Circuit precedent in A.C. Aukerman v. R.L. Chaides Construction, laches bars pre-suit damages in a patent case where there   Read More »

Posted in IP and Technology Litigation, Patent Litigation | Tagged , , ,

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Ninth Circuit Upholds First District Court Determination of FRAND Licensing Rate and Affirms $14.5 Million Damage Award

The Ninth Circuit has affirmed Microsoft’s $14.5 million jury verdict against Motorola, upholding the first federal bench trial decision setting a fair, reasonable, and non-discriminatory (FRAND) licensing rate. Armed with the court’s FRAND guidance, the jury found Motorola violated its commitment to license its H.264 (video encoding) and 802.11 (WiFi) standard-essential patents (SEPs) under FRAND terms. We previously discussed SEPs and FRAND here. Motorola offered to license its H.264 and 802.11 SEP portfolios to Microsoft at 2.25% of the end-product price. Microsoft found that rate unreasonable and promptly sued Motorola, claiming status as a third-party beneficiary to Motorola’s FRAND commitment   Read More »

Posted in Antitrust Litigation, FRAND, IP and Technology Litigation, Patent Litigation | Tagged , , , , , ,

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Split Ninth Circuit Panel Rejuvenates Doctrine of Initial Interest Confusion

Imagine you are driving to Flagstaff for the weekend and, as you approach Camp Verde, you really could go for a McDonald’s hamburger.  You see a McDonald’s sign from the highway, take the exit, and learn that the sign actually directs you to a Burger King.  “Oh well,” you think, “I guess I’ll take Burger King instead.”  You knew you weren’t getting McDonald’s when you made the purchase.  But were you the victim of trademark infringement nonetheless, since you thought you were getting McDonald’s when you took the exit, and wouldn’t have bought Burger King absent that initial confusion? Or   Read More »

Posted in Internet and Domain Name Litigation, Trademark Litigation | Tagged ,

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Supreme Court Holds Patent Royalties Expire When Patent Expires

In 1964, the Supreme Court held, in Brulotte v. Thys Co., that a patent owner may not receive royalties on a patent after the patent expires.  Today, in Kimble v. Marvel Entertainment, the Supreme Court declined to overturn Brulotte, relying on stare decisis, which “carries enhanced force when a decision, like Brulotte, interprets a statute.”  In dissent, Justice Alito disagreed that Brulotte interpreted a statute, arguing it is “a judge-made rule and is not grounded in anything that Congress has enacted.” As part of a patent infringement settlement, Marvel purchased Kimble’s patent on a “toy web-shooting glove,” allowing Marvel to   Read More »

Posted in Patent Litigation | Tagged ,

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