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U.S. Intellectual Property and New Media Law Update DENIED SEIZURE OF CIGARETTES NOT APPEALABLE In re Lorillard Tobacco (Ninth Cir. - May 7, 2004) DISCLOSURE STATEMENT: PATENTS.COM IS MERELY DESCRIPTIVE In re Oppendahl & Larson LLP (Fed. Cir. - June 24, 2004) A FACE ONLY A COPYRIGHT OWNER COULD LOVE Pivot Point International, Inc. v. Charlene Products, Inc. and Peter Yau (Seventh Cir. - June 25, 2004) COPYRIGHT INFRINGEMENT CHECK ON AISLE FOUR Mywebgrocer, LLC v. Hometown Info, Inc., et al. (Second Cir. - July, 13, 2004) DENIED SEIZURE OF CIGARETTES NOT APPEALABLE In re Lorillard Tobacco (Ninth Cir. - May 7, 2004) Lorillard is the owner of NEWPORT cigarettes. Lorillard sued a John Doe Nevada retailer for federal trademark violations and sought an ex parte seizure pursuant to 15 U.S.C. 1116(d)(1) to seize and impound cigarette packages and other evidence of counterfeiting in Doe's possession. The district court denied the motion and Lorillard quickly appealed. The district court denied the seizure application because Lorillard did not present sufficient evidence that the goods to be seized were in fact counterfeit. Before denying the application the district court did provide Lorillard time to supply additional evidence which it did, but again, the district court found the evidence insufficient. That brings us to the issue in this appeal - can a plaintiff appeal the denial of an ex parte seizure order. As a general rule, appellate jurisdiction is limited to "final decisions of the district courts of the United States." Lorillard argues that pursuant to 28 U.S.C. 1292(a)(1) an appellate court has jurisdiction over "appeals from . . . [i]nterlocutory orders of the district courts of the United States . . . granting continuing, modifying, refusing or dissolving injunctions, or refusing to dissolve or modify an injunction." The issue is whether an ex parte seizure order is an injunction. In holding that it is not, the Ninth Circuit analyzed the legislative history of the seizure statute and held that since a injunction is only granted upon hearing and after notice to the defendant, an ex parte seizure is not an injunction and therefore, its denial can not be appealed. The dissent in this case is worth reading. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/9th/0316553p.pdf DISCLOSURE STATEMENT: PATENTS.COM IS MERELY DESCRIPTIVE In re Oppendahl & Larson LLP (Fed. Cir. - June 24, 2004) Applicant, a U.S. patent and trademark law firm, filed an application to register the trademark PATENTS.COM in respect of "computer software for managing a database of records and for tracking the status of the records by means of the Internet" with the U.S.P.T.O. In reviewing the specimens submitted with applicant's Amendment to Allege Use, the Examining Attorney found that the trademark PATENTS.COM was merely descriptive as applied to applicant's software for tracking patent applications and issued patents. The Board affirmed the U.S.P.T.O's refusal to register, and applicant appealed the decision to the United States Court of Appeals for the Federal Circuit. The Federal Circuit affirmed the Board's decision, finding that PATENTS.COM was merely descriptive as applied to appellant's goods. However, the court left open the possibility that in some cases the addition of a Top Level Domain, such as ".com", to a descriptive term might add source-identifying significance thereto. The decision can be viewed at: http://laws.findlaw.com/fed/031525.html A FACE ONLY A COPYRIGHT OWNER COULD LOVE Pivot Point International, Inc. v. Charlene Products, Inc. and Peter Yau (Seventh Cir. - June 25, 2004) Plaintiff, by assignment, was the owner of a copyright registration in and to a mannequin, which was used by cosmetician and hair stylist in their job training. The mannequin did not have the look of just any mannequin. Instead, it had the "hungry look" of a runway model. Defendant, a one time employee of Plaintiff, developed and manufactured a mannequin that looked similar to Plaintiff's. Thereafter, Plaintiff sued Defendant for copyright infringement. The district court dismissed the case on summary judgment, holding that a mannequin head was not copyrightable and Plaintiff appealed. The issue on appeal was whether the sculptural features of appellant's mannequin could be identified separately from, and were capable of existing independently of, its utilitarian aspects. A useful article is protectable under copyright law if it has pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspect of the article. The court discussed the concepts of physical and conceptual separability. Ultimately, the court reversed and remanded the case for trial on appellant's infringement claim, concluding that the face of appellant's mannequin was copyrightable as it was a product of the creative process "unfettered by functional concerns" and conceptually separable from its utilitarian function for hair display or make-up training. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/7th/013888p.pdf COPYRIGHT INFRINGEMENT CHECK ON AISLE FOUR Mywebgrocer, LLC v. Hometown Info, Inc., et al. (Second Cir. - July, 13, 2004) Plaintiff and defendant both create online grocery shopping systems for traditional grocery stores. Plaintiff created an online grocery store for a supermarket and populated the website with 18,000 product descriptions. The supermarket replaced plaintiff with defendant, who copied plaintiff's product descriptions, capitalized them, and put them on its online grocery store. Plaintiff filed this suit alleging copyright infringement, false designation of origin, tortuous interference, among other claims and also moved for preliminary injunction. The district court denied the preliminary injunction and the court of appeals affirmed for different reasons. The appeals court held that plaintiff satisfied the irreparable harm prong of the preliminary injunction test because plaintiff made out a prima facie showing of infringement, which was not rebutted by defendant. The court held, however, that plaintiff did not show a likelihood of success on the merits, or, alternatively, fair grounds for litigation and a balance of the hardships tipping decidedly in its favor. The court held that plaintiff might have had a narrow copyright in its product descriptions, but that a broader comparison of product descriptions by various companies might have persuaded a trier that few of the descriptions included creative elements, and that the differences between various companies' descriptions were so slight in the aggregate as to be noncreative. The appeals court felt that since both parties would suffer only determinable monetary damages if an injunction were not to issue but the third party supermarket would have its website shut down, perhaps permanently losing customers, an injunction was not warranted. The decision can be viewed at: http://caselaw.lp.findlaw.com/data2/circs/2nd/037909p.pdf |
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