Our weekly SoCal IP Institute meeting on Monday, January 26, 2015 will be a discussion of:
Olem Shoe Corp. v. Washington Shoe Corp, Case No. 12-11227 (11th Cir. January 12, 2015) (available here). In 2009 and 2010, Washington Shoe sent cease and desist letters to Olem Shoe Corp. alleging copyright infringement of designs of Washington Shoe’s Zebra Supreme and Ditsy Dots boots. The cease and desist letters did not identify a registered copyright. Therefore, Olem’s counsel responded to Washington Shoe asking for the registration. Washington Shoe’s counsel responded, but only cited the copyright registration certificate number for the Ditsy Dots design. Olem was unable to find the cited copyright registration. As a result, Olem filed a declaratory relief action of non-infringement of Washington Shoe’s copyrights. The district court held that the copyrights were infringed, but not willfully. On appeal, the Eleventh Circuit affirmed the district court finding that the copyrights were not willfully infringed, and that to prove willfulness, the plaintiff must show that the alleged infringer acted “despite an objective high likelihood that the actions taken” constituted infringement.
Omega S.A. v. Costco Wholesale Corporation, Case No. 11-57137 (9th Cir. January 20, 2015 ) (available here). Plaintiff Omega sued Costco for copyright infringement resulting from Costco’s unauthorized importation into the U.S. of Omega watches. The district court granted summary judgment in favor of Costco finding that Omega’s claims were barred by the first sale doctrine. On appeal to the Ninth Circuit, the Ninth Circuit reversed the district court’s decision stating that the first sale doctrine did not apply to copies of copyrighted works that had been produced outside of the United States. The case was remanded to the district court. On remand, the district court granted summary judgment in favor of Costco due to Omega’s misuse of its copyrights. Costco also was awarded attorney fees in the amount of $396,844.17. Omega appealed both the summary judgment decision and the award of attorney fees. On appeal, the Ninth Circuit affirmed both of the district court’s rulings, finding that Omega misused its copyrights and affirming Costco’s award of attorney fees.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 26, 2015 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 Smith by 9 am Monday morning.