We will be discussing one Federal Circuit case and one California Court of Appeal case during our weekly SoCal IP Institute meeting on Monday, November 12, 2012. Brief synopses are presented below.

Winchester Mystery House, LLC v. Global Asylum, Inc., Case No. H036253 (Cal. App. October 24, 2012) (attached).

The plaintiff is a privately owned company that owns and operates the Winchester Mystery House, which is a popular tourist attraction in San Jose, California that was built by Sarah Winchester, a family member of the Winchester Repeating Arms Company.  It is now a museum and comprises of the Winchester mansion, surrounding gardens and other structures.  The plaintiff owns a word mark and an architectural mark for the Winchester Mystery House, which have been registered since February 2010.  The defendant released a film entitled “Haunting of Winchester House” which told a fictitious horror story involving Sarah Winchester.

The plaintiff sued for unauthorized use of its trademarks, unfair competition, and interference with contract and economic advantage.  The trial court granted the defendant’s motion for summary judgment where the defendant argued that the First Amendment provided an absolute defense and the fair use doctrine allowed defendant to identify plaintiff’s marks in the context of describing the movie.

The California Court of Appeal for the Sixth District affirmed stating that the marks have historical significance and the defendant’s film title satisfies both prongs of the Rogers test in adequately ensuring protection of both the public interest in avoiding consumer confusion and the public interest in free expression.  The Court also affirmed the trial court’s grant of summary judgment as to the interference causes of action, stating that the evidence would not allow a reasonable trier of fact to find in favor of plaintiff as to these causes of action.

Voter Verified, Inc. v. Premier Election Solutions, Inc., Case No. 2011-1553, 2012-1017 (Fed. Cir. November 5, 2012) (attached).

The plaintiff brought two patent infringement actions in the District Court for the Middle District of Florida against various parties, alleging infringement of Reissue Patent RE40,449.  The patent related to automated systems and methods for voting in an election, featuring a self-verification procedure by which “machine and human error may be detected and corrected before the ballot is submitted by the voter for tabulation.”  The defendants filed for summary judgment of non-infringement and invalidity due to obviousness based in part on prior Internet articles. The plaintiff argued that the article on the web was not a publicly accessible printed publication because there was no evidence of indexing.  The district court disagreed saying that indexing is only one among many factors that may bear on public accessibility and a skilled artisan would have found the web article even without indexing.

In consolidated appeals, the Federal Circuit affirmed stating that the district court correctly held Claim 49 invalid for obviousness and Claims 1 and 25 not infringed because none of the accused products includes a ballot scanning device or its equivalent.  The Court also affirmed the district court’s conclusion that plaintiff failed to create a genuine issue of material fact regarding whether the defendants exercised the requisite control or direction for steps performed “by the voter” to directly infringe the method claims.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 12, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.