Cantor Colburn June/July 2014 Newsletter
A new spin on preliminary injunctions
Trademark holders now face a tougher standard
The federal appeals court recently held that a trademark owner seeking a preliminary injunction against an alleged infringer must first show that it will suffer irreparable harm in the absence of an injunction. This holding will stand even if the owner has already established a likelihood of succeeding on its infringement claim. Although the decision reverses long-standing precedent, it wasn’t totally unexpected after recent rulings by the U.S. Supreme Court. This article examines the arguments in this case involving the name of a ’50s vocal group. Although the ruling favored the defendant, a sidebar notes that the court did reject the latter’s claim that the plaintiff had abandoned the trademark.
Herb Reed Enterprises, LLC v. Florida Entertainment Mgmt., No. 12-16868, Dec. 2, 2013 (9th Cir.)
eBay Inc. v. MercExchange, L.L.C., No. 05-130, May 15, 2006 (U.S. Supreme Court)
Winter v. Natural Resources Defense Council, Inc., No. 07-1239, Nov. 12, 2008 (U.S. Supreme Court)
Inventive patent requires both hardware and software
In these technology-oriented times, it seems that more and more patents claiming computer-related inventions are being filed. But, when looking to nip infringers in the bud, holders of such patents will need to take care in drafting claims. Specifically, they should include separate claim sets to hardware, software, and a combination of hardware and software to cover all variations of the alleged infringing product. This article explains why a plaintiff who failed to do so lost its case.
Nazomi Communications, Inc. v. Nokia Corp, No. 2013-1165, Jan. 10, 2014 (Fed. Cir.)
Sins of omission
Inequitable conduct case turns on undisclosed information
So-called “inequitable conduct” during the patent application process can undermine the enforceability of that patent. But bad information isn’t always the problem; “sins of omission” can come back to haunt applicants as well. This article discusses an infringement case in which the defendant supported its arguments with testimony from an executive from another company. When it was later discovered that the plaintiff had withheld evidence that corroborated that testimony, the appellate court sent the case back to the district court to determine whether the plaintiff’s withholding was material, as well as whether it acted with the intent to deceive the U.S. Patent and Trademark Office.
The Ohio Willow Wood Co. v. Alps South, LLC, Nos. 2012-1642, 2013-1024, Nov. 15, 2013 (Fed. Cir.)
Dude, can you copyright a hookah?
A manufacturer of hookahs alleged that a rival company infringed its copyright by selling hookahs identical in shape but that didn’t include the same images. At issue for the appeals court was the idea of conceptual “separability”: Did distinctiveness of shape affect separability? This article explains that the court determined “no,” but only after deferring to the relevant Copyright Office interpretations.
Inhale, Inc. v. Starbuzz Tobacco, Inc., No. 12-56331, Jan. 9, 2014 (9th Cir.)
