Cantor Colburn August/September 2014 Newsletter
MJ scores again
Basketball legend taking a shot at grocery store’s ad campaign
When a Chicago-area grocery store chain used legendary Chicago Bulls player Michael Jordan’s identity in its advertising campaign, he responded with a $5 million lawsuit alleging violations of a number of laws. The ad congratulated Jordan on his Hall of Fame induction but included the chain’s logo and marketing slogan. In court, the chain claimed that this was noncommercial speech protected by the First Amendment. An appeals court ultimately ruled that the case could proceed, determining that the ad was nonprotected commercial speech. This article examines the court’s reasoning and, in a sidebar, its clarification of the proper use of the “inextricably intertwined” doctrine.
Jordan v. Jewel Food Stores, Inc. and SuperValu Inc., No. 12-1992, Feb. 19, 2014 (7th Cir.)
Watch out, copyright holders!
Release of conference call transcript deemed not infringement
Several hours after a Swiss company released its earnings report, it held a conference call with a group of financial analysts (as permitted by Swiss law). No journalists or press organizations were invited, and the analysts were informed that no recordings for publication were permitted. Nonetheless, a financial information provider obtained a recording and transcript and made both available, without alteration or editorial commentary, to subscribers to its online financial research service. This article examines why an appeals court decided that this constituted fair use.
The Swatch Group Mgmt. Services Ltd. v. Bloomberg L.P., Nos. 12–2412–cv, 12–2645–cv, Jan. 27, 2014 (Fed. Cir.)
Expert testimony needed on patent indefiniteness claims
When a district court finds that expert evidence is unnecessary to supporting a patent invalidity argument, most plaintiffs would probably think they’re off the hook. But this article examines a case in which an appeals court found that expert testimony was indeed necessary for determining infringement liability. The court’s ruling is a strong reminder that attorney argument won’t suffice when evidence is necessary. As the court noted, it can’t be assumed that, without evidence, a general purpose judge can ascertain the view of experts in
the field.
Elcommerce.com v. SAP AG, 2011-1369, Feb. 24, 2014 (Fed. Cir.)
Forewarned is forearmed? Doctrine of equivalents tested
The doctrine of equivalents prevents would-be infringers from avoiding liability by making only minor changes to a patented invention. But what if a so-called equivalent was foreseeable at the time of the patent application, and the patentee still didn’t include it in the patent? The district court held that foreseeability didn’t preclude the application of the doctrine of equivalents, but nonetheless granted judgment of noninfringement. This article discusses the appeals court’s decision that the lower court was correct on the first point, but not the second.
Ring & Pinion Service Inc. v. ARB Corporation, No. 2013-1238, Feb. 19, 2014 (Fed. Cir.)
