Court Granted Defendant's Motion to Dismiss Copyright Infringement Claims

In a March 28, 2014 Decision and Order, Judge Laura Taylor Swain granted defendant John Wiley & Sons, Inc.’s motion to dismiss plaintiff Ellen Sinisi’s amended complaint concerning copyrights to numerous photographs, without prejudice to the renewal of certain claims.

"In order to state a claim for copyright infringement claims a plaintiff must 1) allege which specific original works are the subject of the copyright claim, 2) that plaintiff owns copyrights in those works, 3) that the copyrights have been registered in accordance with the statute, and 4) by what acts during what time the defendant infringed he copyright." The Court found that plaintiffs adequately pleaded copyright infringement as to each of the works specifically identified in the exhibits but found that their allegation that "[a] reasonable opportunity for further investigation and discovery will confirm that Defendan[t] also has infringed other copyrighted works created and owned by Plaintiffs" was insufficient to satisfy the first element of a claim for copyright infringement. Accordingly, defendant's motion was granted, without prejudice, as to any claims for photographs not identified in the exhibits. With respect to the adequately pleaded claims, the Court also found "that the lack of common questions of fact and law and the potential prejudice to [defendant] justify granting [defendant's] motion to sever those claims." Plaintiffs' declaratory relief claims were also dismissed by the Court, which noted that plaintiffs were unable to identify a "specific provision of the Copyright Act that confers the claimed rights on them" and to the extent the claims are premised on contract rights, plaintiffs failed to state that claim.

Court Declines to Dismiss Claim to Declare “Tiffany Setting” Generic for Rings

In a January 17, 2014 ruling, Judge Laura Taylor Swain denied Tiffany and Company’s motion to dismiss Costco Wholesale Corporation’s counterclaim to declare the term “Tiffany setting” to be generic for a ring “‘setting comprising multiple slender prongs extending upward from a base to hold a single gemstone.’” Costco advertised two rings it sold at one of its stores as having a “Tiffany setting,” and Tiffany sued for statutory and common law trademark infringement. Costco counterclaimed for declaratory relief to declare the term “Tiffany setting” generic as applied to rings, and Tiffany then moved for summary judgment or judgment on the pleadings.

The Court first noted that although the “Tiffany” mark had first been applied to jewelry in 1868 and the registered mark had long since become “incontestable,” “[e]ven an incontestable or famous mark can become generic and lose protection.” Judge Swain further wrote that a “court may partially cancel or limit a registered trademark if only one use of the trademarked term has become generic.”

In deciding the motion, the Court observed that only “‘in the rarest of cases may summary judgment be granted against a plaintiff who has not been afforded the opportunity to conduct discovery.’” Judge Swain also noted that the “question of whether a mark is, or has become, generic is generally one of fact.” Judge Swain then denied summary judgment, writing that in “support of its argument that ‘Tiffany’ has acquired a generic meaning when used to refer to a type or style of ring setting, Costco offers excerpts from dictionary definitions of ‘tiffany’ and ‘Tiffany setting,’ a preliminary report by a lexicographer, evidence of generic use of the term ‘Tiffany setting’ by jewelry manufacturers, retailers and consumers, and examples of the generic use of the term ‘tiffany setting’ in publications.” The Court cautioned that “none of this evidence is by any means conclusive of the proposition” of genericness “advanced by Costco,” but that it is sufficient at the “pre-discovery” phase to defeat summary judgment.

Court Invalidates Patent Based on Patent Counsel's Inequitable Conduct

In a September 30, 2013 ruling, Judge Laura Taylor Swain invalidated plaintiff Worldwide Home Products, Inc.'s patent on the ground of inequitable conduct, and dismissed plaintiff's infringement action against Bed, Bath and Beyond, Inc. and Cohesion Products Inc.  The patent-in-suit relates to a clothing hanger having two configurations.  During the prosecution of the application that matured into the patent-in-suit, the plaintiff's patent lawyer submitted to the PTO pages from a website of another product that it deemed relevant to the claimed invention.  The website pages, however, only had low resolution images of the product, which made it difficult to distinguish particular product features.  The plaintiff's patent counsel made representations to the patent examiner about what the web pages showed about the product, and on the basis of those representations, the examiner allowed the application.  Unbeknownst to the PTO, however, the plaintiff's attorney had an actual sample of the product and high resolution photographs of the product that had been supplied by the defendants' counsel.  The actual product and the high resolution photographs showed that plaitniff's patent counsel's representations to the PTO were untrue.  Patent counsel claimed that he did  not supply the product or high resolution photographs to the PTO because they were undated, so he could not tell whether or not they were prior art.

A threshold issue for Judge Swain in determining the defendants' motion for summary judgment of invalidity based on inequitable conduct was the admissibility of the report and testimony of defendants' expert witness, William Poms, n former patent examiner, that that plaintiff's patent counsel had committed inequitable conduct.  The plaintiff argued that Poms' testimony was "not properly admissible under Federal Rule of Evidence 702 in that it inaccurately informs the Court of the law and usurps the court's and jury's roles in determining the law and facts of" the case.  The Court rejected the challenge, ruling that "Mr. Poms is qualified as an expert in the patent prosecution process, having served as both a PTO examiner and a prosecuting attorney.  He has based his opinions on the factual record before the Court, and has reliably applied his knowledge of the facts and the law."

Amendment of Patent Infringement Contentions with Information Learned in Discovery Denied

In an August 12, 2013 ruling, Judge Laura Taylor Swain, applying the Northern District of California patent rules, denied plaintiff Richard A. Williamson's motion to amend its infringement contentions in its patent infringement action against AT&T Operations, Inc.  The plaintiff sought to amend his contentions supposedly in response to information learned from AT&T's Rule 30(b)(6) deposition and 1.8 million page document production.  AT&T contended, and the Court agreed, that the information that Williamson supposedly learned through discovery was publicly available before he filed his infringement contentions.  Williamson nevertheless contended "that publicly available information at the time he served his infringement contentions was less reliable than non-public information that became available during discovery."  Judge Swain rejected this argument, writing that "[a]llowing a Plaintiff to delay serving infringement contentions because publicly available information might not be as reputable as yet-undisclosed information would run contrary to the purpose of the" infringement contention disclosure rules of focusing discovery and the remainder of an infringement case.  The Court thus found that the plaintiff lacked diligence in seeking to amend his contentions, and denied the motion without having to reach whether AT&T was prejudiced by the delay.

Dilution and Unfair Competition Claims Dismissed on Motion for Judgment on the Pleadings

In an August 12, 2013 ruling, Judge Laura Taylor Swain granted defendants' motion for judgment on the pleadings dismissing plaintiff Allied Interstate LLC's complaint against them.  Allied Interstate provides debt collection, among other services.  The defendants, Kimmel & Silverman P.C., are a law firm specializing in Fair Debt Collection Practices Act cases, and operate a website, www.creditlaw.com, to promote their services.  Allied Interstate asserted federal and state unfair competition-related and dilution claims arising from the defendants' alleged use of "Allied Interstate" on their website, in the metadata for the site (which is not typically viewable by a user of the site), and in their purchase of the phrase as part of Google's AdWords program.  Without reaching the issue of whether "Allied Interstate" is a famous mark, Judge Swain dismissed the dilution claims finding:  (1) the claim is inapplicable where the defendant uses the mark to refer to the mark owner's goods or services as defendants used the mark here; (2) defendants' use of the mark was a fair use; and (3) to the extent that defendants used the mark to draw a distinction between Allied Interstate's services and their own, the use fell within the comparative advertising exception to a dilution claim under 15 U.S.C. §1125(c)(3)(A)(i).  Concerning the unfair competition and false designation of origin claims, the Court found the allegations to be implausible formulaic conclusions.  Focusing on defendants' actual use of the "Allied Interstate" mark, Judge Swain ruled: