Friday, October 15, 2010

Northern District of California Judges rule in Intellectual Property cases

Photo Courtesy of Nancy Sims
Intellectual property can be loosely defined as group of intangible property whose origin is in human creativity.  This class of intangible property includes patents, copyrights, trademarks, trade secrets, moral rights, publicity rights and rights against unfair competition.  Below is a series of cases that considers this intangible property.

Berman v. OpenTV was a patent infringement case filed in state court that resulted in a license agreement on October 25, 2000.  Mr. Berman is now suing OpenTV for breaching of contract agreement by assigning the license agreement in violation of the agreement.  OpenTV removed the case federal court stating that patent validity is a predicate to determining whether it violated the agreement.  Mr. Berman amended his complaint to remove all references to patent law and sought to remand it to the state trial court.  Judge Maxime M. Chesney agreed and remanded the case to the Superior Court in San Mateo County.

Disney Enterprises v. San Jose Party Rental, Inc. is dual copyright and trademark infringement where the entertainment company is suing Viet Nguyen and his various companies for selling moonbounces and other counterfeit goods that bear the likeness of many of its copyrighted and trademark characters without a license.  This wasn't a very big operation, at the motion hearing counsel for Disney stated that he believed that Mr. Nguyen ran the business out of his house.  Mr. Nguyen failed to appear at the hearing.  Judge Charles R. Breyer granted judgment for Disney in the amount of $270,000 and enjoined Mr. Nguyen from using Disney's copyrighted and trademarked characters.

DocMagic v. Ellie Mae is a business argreement gone awry much like Berman v. OpenTV above. DocMagic has software which enables mortgage brokers to enter information into a Loan Origination System (LOS).  DocMagic created such a proprietary system which Ellie Mae used.  After the agreement went sour, DocMagic accused Ellie Mae of constinuing to use its software and Ellie Mae accused DocMagic of creating new software that loaded information into the LOS without going through Ellie Mae.  DocMagic claims this is trademark infringement and, given Ellie Mae's incredible market share, an antitrust violation.  Ellie Mae claims that DocMagic is using its copyrighted software and violated the Computer Fraud Abuse Act.  Judge Marilyn Hall Patel stated most of the claims were adequately pleaded, except that the antitrust claim lacked an explanation of how Ellie Mae would control the market by using DocMagic's software.

In Edge Games v. Electronic Arts, the plaintiff claims that EA's game Mirror's Edge violates its trademarks.  Edge claims it owns the "EDGE" mark and that EA is infringing upon it with the Mirror's Edge game.  Trademark infringement requires the plaintiff to prove it has a valid trademark.  Judge William H. Alsup did not believe Edge could do that, "the record contains numerous items of evidence that plaintiff wilfully committed fraud against the USPTO in obtaining and/or maintaining registrations for many of the asserted 'EDGE' marks, possibly warranting criminal penalties if the misrepresentations prove true."  Additionally, the mark by fraud theory would invalidate the mark.  He denied the motion for a preliminary injunction.

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