Our weekly SoCal IP Institute meeting on Monday, February 8, 2016, will be a discussion of the following:
Embarcadero Tech. v. Delphix Corp, (TTAB 1/21/16) (available here). At issue was a motion for summary judgment brought by Delphix on Embarcadero’s claim that Delphix fraudulently proclaimed use in commerce of its DELPHIX mark. Embarcadero also filed a motion to amend its petition for cancellation to add claims, including that the the DELPHIX mark was void for nonuse prior to registration. Embarcadero failed to rebut Delphix’s evidence or raise a genuine dispute of material fact regarding intent to deceive. The PTO further held that Embarcadero was citing the wrong legal standard regarding the proposed new claim of nonuse; the PTO held that Delphix was entitled to the benefit of the insurance extension and therefore any nonuse claim had to allege that Delphix did not use its mark within the time for filing its statement of use as extended. Embarcadero was granted time to file a second amended petition to cancel under the correct legal standard.
Simmons v. Stanberry et al, (2nd Cir. 1/15/06) (available here). Hip Hop Artist Tyrone Simmons brought a suit for copyright infringement alleging that in 2006, he purchased an exclusive license to a hip-hop beat created by Stanberry and that Stanberry later sold that beat to Curtis Jackson aka 50 Cent. Simmons’ claim was held as time-barred under the Copyright Act’s three year statute of limitations because he was aware of Stanberry’s repudiation of his license rights and release of the song more than three years before suit was filed.