After a holiday week away, we invite you to join us for a SoCal IP Institute meeting, Monday, February 28 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday.
We will be discussing the following cases:
ABB, Inc. v. Cooper Indus., LLC, 2010-1227 (Fed. Cir. Feb. 17, 2011) (case attached). ABB sought declaratory judgment in the Southern District of Texas that it did not infringe a number of Cooper patents. ABB was a licensee to the patents as a result of a prior dispute between the two parties. Whether or not the resulting settlement and license agreement covered the situation was the basis of ABB’s declaratory judgment action. The S.D. Tex dismissed the case for lack of subject matter jurisdiction as not requiring any application of patent laws and being a purely state law contractual dispute. After some lengthy discussion, the Federal Circuit reversed the decision because the basis of the claim rested in patent law.
Fleischer Studios, Inc. v. A.V.E.L.A., Inc., No. 09-56317 (9th Cir. Feb. 23, 2011) (case attached). Fleischer Studios, Inc. sought review of a summary judgment dismissing his copyright infringement and trademark infringement claims. Fleischer alleged that the defendants sale of their posters featuring Betty Boop infringed both his copyrights and trademarks.
The ownership of Betty Boop appears to have been convoluted for some time, but Fleischer offered a number of chain of title bases for his copyright ownership in the character at the district court. Fleischer only sought review of one on appeal. The 9th Circuit found that one of the assignments upon which the plaintiff relied specifically carved out the character of Betty Boop from the assignment of several teleplays in which she was featured. Accordingly, he lacked the title necessary to maintain a case for copyright infringement.
Fleischer’s only trademark claim was, at best, to a common law word mark for the phrase “Betty Boop”. The district court granted summary judgment in view of Fleischer’s failure to provide any evidence of ownership of a valid mark. The 9th Circuit affirmed on the alternative basis that the defendants were not using the image of Betty Boop as a trademark, but instead as functional and aesthetic aspects of the posters.