The importance and diversity of issues (and even the fun) of intellectual property law are exemplified in a number of cases from the U.S. District Court for the District of Arizona. Some of those cases are highlighted below:
Patent Infringement:
Western Emulsions Inc. v. Copperstate Emulsions Inc., 42 U.S.P.Q.2d (BNA0 1856 (D. Ariz. 1997)). Decisions on motions in this patent case serve as reminders to counsel and patent owners to name spouses (court granted motion to add spouses as defendants in view of Arizona's community property laws); and to forego weak motions (court declined to order a party to admit what it has already expressly denied or to produce what it says it does not possess).
A partial summary judgment grant is a reminder of the importance of patent marking. Not marking the patent number on the tank from which bulk product was discharged to customer trucks lacked compliance with the marking requirement of 35 U.S.C. Section 287. Thus, the plaintiff could recover damages only for infringement subsequent to actual notice.
Research Corp. Techs. Inc. v Hewlett-Packard Co., 936 F.Supp. 697 (D. Ariz. 1996). A conflict of interest resulting from the merger of the law firm representing the plaintiff is the basis for the defendant's motion to disqualify. The court recognized an inadvertent conflict, but saw little real prejudice to the defendant, compared with the plaintiff's burden of changing counsel. The court declined to disqualify.
Trademark Infringement:
American Sleek Craft Inc. v. Nescher, 22 U.S.P.Q.2d (BNA0 1255 (D. Ariz. 1991)). Injunction against the use of "Sleek Craft" was sought by American, the successor to bankrupt Sleek Craft Boats by Nescher Inc. (SBBN). Nescher, an individual, had begun the manufacture of boats under the mark "Sleek Craft." Subsequently, Nescher incorporated SBBN and continued the manufacture of "Sleek Craft" boats by that entity. American purchased the assets of SBBN, including rights to trademarks. Nescher's transfer of his business to the SBBN implicitly transferred his trademark rights. And he never questioned the written transfer of trademarks from SBBN to American. Therefore, Nescher was stopped from claiming that he, not SBBN, owned the marks all along.
Jurisdiction and Venue:
Intellectual property disputes resulted in the following holdings on motions to dismiss or transfer:
Kolbe v. Trudel, 945 F.Supp.1268 (D. Ariz. 1996). Motion to dismiss was granted based on lack of subject matter jurisdiction. The plaintiff asserted copyright infringement, false designation of origin under Section 43(a) of the Lanham Act. 15 U.S.C. Section 1125(a); common-law unfair competition; and breach of contract. The court concluded that preparation and distribution of French translations in Canada are not violations of the U.S. Copyright Act, 17 U.S.C. Section 101 et seq. The court stated that without an allegation of confusion in the United States, there is no Lanham Act violation. It also concluded that a choice-of-forum clause in the parties' agreement did not invest the court with subject matter jurisdiction.
Tomar Electronic Inc. v. Whelen Technologies Inc., 819 F.Supp. 871 (D. Ariz. 1992). The court found venue proper if a defendant resides in the district. For purposes of venue, a corporation "resides" where it is subject to personal jurisdiction. 28 U.S.C. Section 139©. By its long-arm statute, Ariz.R.Civ.P.42(a). Arizona exercises personal jurisdiction to the maximum extent permitted by the due process clause of the U.S. Constitution or, in other words, pursuant to the "minimum-contracts test."
The court distinguished "special jurisdiction" and "general jurisdiction." General jurisdiction requires substantial activity in the forum. Special jurisdiction, at issue here, involves sporadic contracts, but contracts from which the particular cause arises. The 9th U.S. Circuit Court of Appeals' three-part test was applied: Did the nonresident do some act to avail himself or herself of the privilege of conducting activities and protection of its laws? Did the claim arise out of those same activities? Is the exercise of jurisdiction reasonable?
Whelen's sales of 43 infringing units (0.3 percent of U.S. sales) were sufficient minimum contracts. The court found the claims arose from Whelen's actions and the exercise of jurisdiction was reasonable. As for venue, the court concluded that the convenience of the parties and interests of justice were best served by refusing transfer.
Copyright:
Time Warner Cable of New York City v. Cable Box Wholesalers Inc., 920 F.Supp.1048 (D. Ariz. 1996). Partial summary judgment was granted on Time Warner's claim that Cable Box of Tucson violated 47 U.S.C. Section 553. That law prohibits the interception or assistance in interception of cable signals without the cable operator's authorization. Cable Box sold TV cable-signal descramblers that could descramble signals such as Pay Per View's. The court was unconvinced by Cable Box's claim that these devices could be purchased and used legitimately to avoid the low monthly rental of the plaintiff's descramblers.
Trade Secret Misappropriation:
Avemco Corp. v. Nichols, 1995 U.S.Dist.LEXIS8199 (D. Ariz. 1995). Avemco charged departing-employee Nichols with violating a noncompete clause and misappropriating trade secrets. Absent any ambiguity, the court refused to interpret broad noncompete provisions more narrowly than written, despite the urging of Avemco that this was intended. The court found the provisions were unenforceable as overreaching. However, the court found that Nichols did take sensitive trade-secret information. Because the employment-agreement contract provisions were severable, the provisions protecting confidential information survived and were enforceable.
The Urantia Foundation Copyright and Trademark Cases:
Now for the fun! A confluence of celestial and terrestrial beings causes a "spirited" look at some very serious copyright and trademark issues.
Urantia Foundation v. Maaherra, 895 F.Supp. 1329 (D. Ariz.1995). The Urantia Foundation claimed copyright and trademark infringement by the defendant in her admitted copying and distribution of the Urantia Book, a religious text and in her admitted use of the registered three-circle trademark. The court granted partial summary judgement to the plaintiff on the defendant's claim that her First Amendment rights were violated. Recognizing that copyright and trademark laws may indeed conflict with the First Amendment, the court found the plaintiff's exercise of its rights under these laws did not violate the defendant's free exercise of her religion or right to free speech. The idea-expression dichotomy in copyright law, the unavailability of trademark protection for generic terms and fair-use defenses in both copyright and trademark law help preserve First Amendment rights.
Urantia Foundation v. Maaherra, 895 F.Supp. 1335 (D. Ariz. 1995). The Religious Freedom Restoration Act of 1933, Sections 2-7, 42 U.S.C. Sections 2000-2000b-4, does not provide a defense to the plaintiff's copyright-infringement action. The act is to permit redress to one whose exercise of her religion is "substantially burdened by government."
Urantia Foundation v. Maaherra, 895 F.Supp. 1337 (D. Ariz. 1995). Summary judgment was granted to the plaintiff on the defendant's assertion that the Urantia Book copyright is invalid because the copyright claimant is not the author. The book, the defendant claims, is a work of divine revelation. Its authors are spiritual beings. But the court found sufficient human creativity in the book to support a copyright and declined to rule whether the book is a divine revelation.
Urantia Foundation v. Maaherra, 895 F.Supp. 1338 (D. Ariz. 1995). The court granted partial summary judgment to the plaintiff regarding the validity of its trademark. However, assessing the factors to be considered in determining likelihood of confusion, the court found several weighed in favor of the defendant and declined to say that no jury could find in her favor.
Urantia Foundation v. Maaherra, 895 F.Supp. 1347 (D. Ariz. 1995), rev'd and remanded, 114F3d955 (9th Cir.1997). The defendant's motion for partial summary judgment was granted. The plaintiff's copyright-infringement claim was dismissed, and the defendant's assertion that the copyright renewal was invalid was successful. Absent an assignment of copyright from the author, the Urantia Foundation never had the right to renew the copyright. To prevail, the plaintiff needed to prove valid proprietorship by a contractual arrangement with the author.
Urantia Foundation v. Maaherra, 114 F.3d 955 (9th Cir.1997). The court agreed that there was sufficient (human) creativity to support a copyright, but the District Court erred in finding there was an insufficient showing of ownership by the foundation. The intent was clear from the papers establishing the foundation's trust, and formalities were not necessary under the 1909 Copyright Act. The court found the renewal was valid. And erroneous identification of the book as a "work for hire" in the application for renewal did not invalidate the copyright. Maaherra infringed the Urantia Book, the court held. Thus, the case was remanded for a determination of damages.