Court Dismisses Patent Infringement Action for Lack of Standing

In an April 28, 2015 ruling, Judge Colleen McMahon found that the plaintiff in a patent infringement action lacked standing because of a defect in the patent’s chain of title. The plaintiff’s title to the patent depended upon a transfer from the plaintiff’s wholly-owned subsidiary to the plaintiff. The Court found that not such transfer had taken place. Judge McMahon wrote that there had not been an express assignment, and that the plaintiff had not acquired the patent automatically upon the plaintiff’s filing of a certificate of dissolution for the subsidiary. According to the Court, the mere filing of the certificate does not cause the transfer, which happens only upon the filing of a plan of dissolution within three years of the filing of the initial certificate.

Court Finds Jurisdiction Over Declaratory Judgment Action for Trademark Non-Infringement

In an April 27, 2015 ruling, Judge Thomas P. Griesa found that the Court had summary judgment matter jurisdiction to entertain a declaratory judgment action trademark non-infringement, but that exercising such jurisdiction would serve no useful purpose. In this action, the owner of the “Rolcx” trademark for watches and jewelry sued to invalidate the registered “RLX RALPH LAUREN” and “RALPH LAUREN RLX” marks for the same goods, and the defendant counterclaimed for non-infringement. In finding a justiciable declaratory judgment controversy, Judge Griesa noted:

Multiple facts in the record demonstrate that this question meets the Medlmmune standard for justiciability. First, Rolex acknowledges it will bring an infringement action if [the declaratory judgment plaintiff] produces watches and jewelry bearing those marks.…Second, [the declaratory judgment plaintiff] has already offered and sold, between 2004 and 2007, a watch bearing the RLX mark, demonstrating the reality of the controversy, as well as [its] ability and willingness to launch the products in question. …Third, [the declaratory judgment plaintiff] has entered into a joint venture with [a] watchmaker .… Both sides have vigorously pursued this litigation at considerable expense. All this tends to show that the parties here have a real, substantial dispute concerning the trademarks in question, satisfying the Medlmmune standard and establishing the court's declaratory judgment jurisdiction.

The Court nevertheless found that exercising jurisdiction would not be useful, based in part on “legitimate concerns about whether the parties can litigate questions of infringement or dilution (in connection with the declaratory judgment claim) without evidence flowing from the products’ existence in the markets” (and based in part on redacted material unavailable to the public).

Court Dismisses Claims of Foreign Copyright Infringement Against U.S. Licensees

In an April 22, 2015 ruling, Judge Paul A. Crotty dismissed copyright infringement claims against U.S. licensees of the copyrighted work for actions taken in the U.S. that allegedly facilitated foreign copyright infringement. Under U.S. copyright law, so-called “predicate acts” undertaken in the U.S. that are themselves acts of U.S. copyright infringement can also support claims of foreign copyright infringement. In dismissing the copyright infringement claims against the U.S. licensees here, the Court wrote:

Plaintiffs have failed to allege facts demonstrating a predicate act that in itself violates the U.S. Copyright Act. None of the actions taken by Domestic Defendants constitute a violation of U.S. copyright law, when undertaken within the U.S. For example, allegedly creating duplicate master tapes or electronic files, distributing or streaming [the allegedly infringing work], offering to distribute copies of [the allegedly infringing work], signing agreements, and “authorizing” Affiliate Defendants to commit infringement abroad do not constitute violations of U.S. copyright law because Domestic Defendants possessed a license considered valid under U.S. law.