LawUpdates.com - Expert Legal Commentaries

Dream Games: Illegal Use of Copyrighted Work Does Not Preclude Damages for Infringement

2009-06-30T17:33:01+00:00

Copyright Law || By Olivier A. Taillieu and Jeffrey J. Zuber || In a case of first impression, the 9th Circuit held that illegal use or operation of a copyrighted work by the copyright owner does not preclude an award of statutory or actual damages for infringement. In Dream Games of Arizona, Inc. v. PC Onsite, 561 F.3d 983 (9th Cir. 2009),…

In re Spirits Int’l: A Mark Is Geographically Deceptively Misdescriptive Only if Materially Deceptive to a Substantial Portion of the Intended Audience

2009-06-26T19:38:25+00:00

Trademark Law || By Thomas F. Zuber and Laura D. Castner || Clarifying the application of the doctrine of foreign equivalents, the Federal Circuit held that a mark is geographically deceptively misdescriptive if a substantial portion of the relevant consumer market is likely to be deceived by the mark. In In re Spirits International, 563 F.3d 1347 (Fed. Cir. 2009), the Federal…

Webb v. City of Philadelphia: No Religious Discrimination If Accommodation Causes an Undue Burden

2009-06-22T17:18:53+00:00

Employment Law || By Jeremy J. Gray || The Third Circuit U.S. Court of Appeals has upheld the Philadelphia Police Department’s dress code policy that forbids police officers from wearing any religious garb. When the city prohibited a female officer from wearing a Muslim head scarf with her uniform, she sued the city, alleging religious discrimination, retaliation/ hostile…

In re Kubin: Extending “Obvious to Try” to cDNA Sequence Patents

2009-06-17T17:38:57+00:00

Patent Law || By Yuri Mikulka and Spyros J. Lazaris || The Federal Circuit court applied the “obvious to try” test from KSR International v. Teleflex Inc. to biotechnology patent applications, and essentially eviscerated the obviousness standard once applied to biotech patents by the Federal Circuit in In re Deuel. While the decision in In re Kubin, 561 F.3d 1351 (Fed.…

Ramsey Winch v. Henry: Upholding Oklahoma’s Forced Entry Law

2009-06-11T21:46:01+00:00

Employment Law || By Jeremy J. Gray || The Tenth Circuit U.S. Court of Appeals overruled a federal district court decision and upheld state laws that make it illegal for employers to prohibit employees from keeping firearms locked in their vehicles in the company parking lot. In Ramsey Winch Inc. v. Henry, 555 F.3d 1199 (10th Cir. 2009)a…

Kirleis v. Dickie McCamey & Chilcote: Express Consent to Arbitrate Required, Even with Arbitration Provision in Corporate Bylaws

2009-05-28T23:02:00+00:00

Securities Law || By Josh Lawler and Joel B. Ginsberg || The Third Circuit had to weigh two competing principles – the contract law requirement that a party must explicitly consent to an arbitration agreement versus the corporate law principle that directors and shareholders of a corporation are charged with constructive knowledge and acceptance of the corporation’s bylaws. In Kirleis v.…

In re Ferguson: Affirming Bilski’s Machine-or-Transformation Test

2009-05-26T18:17:06+00:00

Patent Law || By Yuri Mikulka and Spyros J. Lazaris || In one of the first post-Bilski decisions by a Federal Circuit panel, the court confirmed the Bilski holding that business methods do not constitute patentable processes if they fail the machine-or-transformation test. Specifically, in In re Ferguson, 558 F.3d 1359 (Fed Cir. 2009), the Court held that the applicant’s marketing…

AP v. All Headline News: Applying the “Hot News” Doctrine to the Internet

2009-05-20T18:02:06+00:00

Copyright Law || By Ryan Smith and Thomas F. Zuber || The U.S. District Court for the Southern District of New York refused to dismiss most of the counts of the plaintiff’s complaint. In so holding, the court in Associated Press v. All Headline News Corp., ___ F. Supp. 2d ___, 2009 WL 382690, No. 08 Civ. 323 (S.D.N.Y. Feb. 17,…

Tafas v. Doll: Limits on Continuations Invalid; Other Claim Limits May Be OK

2009-05-18T16:58:16+00:00

Patent Law || By Yuri Mikulka and Spyros J. Lazaris || The Federal Circuit largely upheld rules promulgated by the PTO to help relieve its enormous backlog of patent applications. The district court had determined that the rules were substantive and therefore beyond the PTO’s legal authority. In Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009), a split Federal Circuit…

Rothman v. Target: Deferring to Jury Finding of Obviousness, But Not of Inequitable Conduct

2009-05-12T20:33:35+00:00

Patent Law || By Yuri Mikulka and Spyros J. Lazaris || In Rothman v. Target Corp., 556 F.3d 1310 (Fed. Cir. 2009), the Federal Circuit upheld a district court’s refusal to set aside a jury finding that the plaintiff’s patent was invalid due to obviousness, but reversed the trial court on its finding of inequitable conduct by the prosecuting attorney. The…

Eshelman v. Agere Systems: Grossing-up of Back Pay Award for ADA Claim

2009-05-5T19:57:00+00:00

Employment Law || By Jeremy J. Gray || In Eshelman v. Agere Systems Inc., 554 F.3d 426 (3rd Cir. 2009), the U.S. Court of Appeals for the Third Circuit deepened the split among federal appeals courts in ruling that a trial judge may “gross up” a back pay award in order to offset additional taxes that the plaintiff…

EEOC v. Watkins Motor Lines: EEOC Can Continue Investigation Even After Charges Are Withdrawn

2009-04-29T20:34:00+00:00

Employment Law || By Jeremy J. Gray || In EEOC v. Watkins Motor Lines Inc., 553 F.3d 593 (7th Cir. 2009), the Seventh Circuit U.S. Court of Appeals reversed a district court decision and held that a charging party’s attempt to withdraw a claim he filed with the Equal Employment Opportunity Commission (“EEOC”) did not end the EEOC’s…

Day v. Staples: The “Reasonable Belief” Required for SOX Whistleblower Protection

2009-04-21T20:16:00+00:00

Securities Law || By Josh Lawler and Joel B. Ginsberg || In Day v. Staples, 555 F.3d 42 (1st Cir. 2009), the Court of Appeals for the First Circuit ruled that the “reasonable belief” requirement for whistleblower protection under the Sarbanes-Oxley Act of 2002 (“SOX”) includes both “objective” and “subjective” reasonableness. In this case of first impression before the First Circuit,…

Crawford v. Nashville: Title VII Protects Employee Who Answers Question in Internal Investigation

2009-04-14T22:44:00+00:00

Employment Law || By Jeremy J. Gray || In Crawford v. Nashville, ___ U.S. ___, 129 S.Ct. 846 (2009), the U.S. Supreme Court reversed the district and circuit courts and held that Title VII anti-retaliation provisions extend to employees who answer questions about discriminatory activity in an employer’s internal investigation. The decision is in line with the very…

The “Amazon Tax” Upheld in New York, Enabling State Taxation of Web Sales

2009-04-8T18:05:00+00:00

Tax Law || By H. Jacob Lager || In a case that has all major online retailers nervous, a Manhattan court upheld a new state tax law that requires many out of state retailers to collect state sales tax on purchases by New York residents in Amazon.com LLC v. New York State Dept. of Taxation and Finance, ___…

Boston Scientific v. Cordis: Obviousness from Two Separate Embodiments

2009-04-2T21:30:51+00:00

Patent Law || By Olivier A. Taillieu and Spyros J. Lazaris || In Boston Scientific v. Cordis, 554 F.3d 982 (Fed. Cir. 2009), the Court of Appeals for the Federal Circuit overturned both the PTO Examiner and the district court trial jury in invalidating Boston Scientific’s patent claims due to invalidity. Specifically, the appellate court determined that prior art disclosed all elements…

Recent Decisions Alter Venue Strategy In Eastern District of Texas Patent Litigation

2009-03-24T19:11:00+00:00

Patent Law || By Spyros J. Lazaris || In the wake of two recent federal appeals cases -- In re Volkswagen of America Inc., 545 F.3d 304 (5th Cir. 2008) and In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) – the Eastern District of Texas has lost some of its steam as the most…

Katz v. Gerardi: CAFA Trumps Anti-Removal Provisions of 1933 Act

2009-03-11T20:13:00+00:00

Securities Law || By Josh Lawler and Joel B. Ginsberg || In Katz v. Gerardi, 552 F.3d 558 (7th Cir. 2009), the Seventh U.S. Circuit Court of Appeals splits with the Ninth Circuit in determining that a securities class action can be removed to federal court under the Class Action Fairness Act of 2005 despite the anti-removal provisions of the Securities…

Huff v. Deloitte & Touche: Investment Advisor Lacked Standing to Sue for Clients

2009-03-3T18:20:00+00:00

Securities Law || By Josh Lawler and Joel B. Ginsberg || In W.R. Huff Asset Management Co. LLC v. Deloitte & Touche LLP, 549 F.3d 100 (2nd Cir. 2008), the Second Circuit Court of Appeals held that an investment advisor who held the power of attorney to sue on behalf of his clients still lacked the standing to sue because it…

LSU v. Smack Apparel: Trademark Protection for Color Schemes

2009-02-6T17:50:00+00:00

Trademark Law || By Jeffrey J. Zuber and D. Dennis La || In Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008), the Fifth Circuit upheld the district court’s finding that a t-shirt maker who used school color schemes in combination with specific facts and indicia about the school infringed on the schools’ trademark…

B&D Contracting: Per Diem Payments Are “Wages” for Benefits Calculations

2009-01-30T17:32:00+00:00

Employment Law || By Jeremy J. Gray || In B&D Contracting v. Pearley, 548 F.3d 338 (5th Cir. 2008), the U.S. Court of Appeals for the Fifth Circuit agreed with the Benefits Review Board’s finding that per diem payments should qualify as “wages” for the purpose of calculating disability benefits under the Longshore and Harbor Workers’ Compensation Act.…

Audi v. Shokan Coachworks: Trademark Infringement in Email Signature

2009-01-27T23:38:00+00:00

Trademark Law || By Olivier A. Taillieu and D. Dennis La || In the case Audi AG v. Shokan Coachworks Inc., 2008 WL 4911730, No. 1:07-CV-00173 (N.D.N.Y. 2008), the federal district court grappled with a slew of trademark claims, combining into one opinion many of the issues raised by a number of other previous courts. Specifically, the court could not grant summary…

Egyptian Goddess v. Swisa: No more Point of Novelty Test for Design Patent Infringement

2009-01-13T11:09:25+00:00

Patent Law || By Olivier A. Taillieu and Spyros J. Lazaris || In its highly anticipated en banc opinion in Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008), the Court of Appeals for the Federal Circuit rejected the point of novelty test for design patent infringement. The Court held that the “ordinary observer” test set forth in Gorham v. White…

In re Bilski: Business Method Patents Take a Hit; State Street Bank Is Out

2009-01-7T22:38:09+00:00

Patent Law || By Olivier A. Taillieu and Spyros J. Lazaris || The eagerly-awaited decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) -- issued by the U.S. Court of Appeals for the Federal Circuit sitting en banc -- significantly narrowed the scope of patentability for business method and process patents. The Court essentially discounted the applicability of State Street…

E.S.S. Entm’t 2000 v. Rock Star Videos: First Amendment Trumps Trademark Rights

2009-01-7T03:43:41+00:00

Trademark Law || By Jeffrey J. Zuber and D. Dennis La || In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the 9th Circuit U.S. Court of Appeals confirmed that when trademark rights clash with the First Amendment, the First Amendment usually wins – at least in cases involving artistic or creative endeavors. The court…